Ex Parte Ciprino et al

Patent Trial and Appeal Board

Nov 19, 2018

12971631 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/971,631 12/17/2010 Peter F. Ciprino
30449 7590 11/21/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
POU920050022US2 8355
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER F. CIPRINO, RICHARD G. SHOMO, and
DAVID R. SCOTT
Appeal2017-007420
Application 12/971,631 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, 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 rejection of claims 1, 3, and 5-14. We have jurisdiction under 35
U.S.C. § 6(b).
1 Appellants identify International Business Machines Corporation as the
real party in interest. Br. 1.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants' claims relate to assessment of workflows, and particularly
to the assessment of inputs according to predefined criteria. Spec. 1, ,r 1.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer program product for estimating and using a remaining
amount of time to consistently schedule completion of development of a
program code at reduced development and customer cost, the computer
program product comprising: one or more computer-readable hardware
storage devices and program instructions stored on at least one of the one
or more storage devices, the stored program instructions comprising;
program instructions to present to a user through a user interface, for
each category of performance of a plurality of categories of performance
required to be completed in order to complete the development of the
program code, a plurality of questions associated with each category,
wherein the development of the program code includes a readiness of the
program code to be used, and wherein each category has an associated
weight;
program instructions to receive a score from the user to each
presented question for each category;
program instructions to compute a weighted score for each question
for each category by multiplying the received score for each question by the
weight of the category that each question is associated with;
program instructions to compute a weighted score for each category
by averaging the weighted scores for the questions associated with each
category;
program instructions to transform the weighted score for each
category to a resulting percent score for each category;
program instructions to receive input data comprising for each
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category, an associated plurality of contiguous percent ranges collectively
encompassing a range of zero percent to one hundred percent;
program instructions to calculate a remaining time for completion for
each percent range in the input data, wherein the calculated remaining time
for completion for each percent range is specific to the category to which
each percent range is associated;
program instructions to ascertain, from the input data, for each
category: (i) a first percent range of the plurality of contiguous percent
ranges, subject to the first percent range comprising the resulting percent
score and (ii) the calculated remaining time for completion that is specific to
the category to which the ascertained first percent range is associated;
program instructions to compute a summation, over the categories, of
the calculated remaining time for completion pertaining to the ascertained
percent range for each category; and
program instructions to determine and display on a monitor a total
remaining time to complete development of the program code, wherein the
total remaining time incorporates the computed summation, and wherein the
display of the total remaining time to complete development of the program
code identifies a current state of a workflow of the development of the
program code to: (i) reduce a development and customer cost of the program
code and (ii) consistently schedule completion of the development of the
program code.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
No Prior Art Listed
The following rejection is before us for review.
Claims 1, 3, and 5-14 are rejected under 35 U.S.C. § 101.
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 3, and 5-14 under
35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, we then
ask, "[ w ]hat else is there in the claims before us?" .
. . To answer that question, . . . 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 .... [The
Court] described step two of this analysis as 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 Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) (internal citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
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Although the Court in Alice made a direct finding as to what the
claims were directed to, we determine that the plain language of the claims
and the Specification provide enough information to inform one as to what
they are directed to.
The steps in representative claim 1 are: 2
App. Br. 26.
determine and display on a monitor a total
remaining time to complete development of the
program code, wherein the total remaining time
incorporates the computed summation, and
wherein the display of the total remaining time to
complete development of the program code
identifies a current state of a workflow of the
development of the program code to: (i) reduce a
development and customer cost of the program
code and (ii) consistently schedule completion of
the development of the program code.
The Examiner found that claims 1 and 3 are directed to "a computer
program product and computer system for estimating a remaining amount of
time to complete development of program code." (Final Act. 5). The
Examiner further found,
entering user data, performing mathematical
computations, and maintaining persistent
organization of data within a data structure within
computer systems or applications are all routine,
2 Our analysis is made based on considering the claims as a whole, but for
purposes of this discussion, we note the result phrase of the independent
claim to point to what the claims are directed to.
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(Id. at 6.).
well-known and conventional computer functions.
Generic computer components performing recited
as performing generic computer functions that are
well understood, routine and conventional
activities amount to no more than implementing
the abstract idea with a computerized system.
The Specification states:
Organizations involved with the delivery of
workflows have a need to properly evaluate
existing open source automation packages in order
to reduce development and customer cost.
Currently developers or system engineers would
need to use a process of best guesses or non
repeatable methods to estimate the completeness of
workflows. Workflows are also a new entry into
the open source paradigm and unfortunately few, if
any, persons have the past experience to evaluate
the readiness and cost of re-using open source
workflows.
Spec. ,r 3. We thus find that the claims are directed to assessing workflows
based on predefined criteria and sizing of results for the evaluation of
workflows. See Spec. ,r 1. This is consistent with the Examiner's findings.
It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409
U.S. 63 (1972), in particular, that the claims at issue here are directed to an
abstract idea. Assessing workflows based on predefined criteria and sizing
of results for the evaluation of workflows represents a method of organizing
human behavior because the Specification states that the claimed process
overcomes "a process of best guesses." Id. at ,r 3. The patent-ineligible end
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of the spectrum includes methods of organizing human behavior, Alice, 134
S. Ct. at 2355-56. Also, we find the steps of:
1. present ... a plurality of questions associated with each
category;
11. receive a score from the user,
111. compute a weighted score for each question;
1v. compute a weighted score for each category by averaging the
weighted scores for the questions;
v. transform the weighted score for each category to a resulting
percent score;
v1. receive input data ... associated [ with a] plurality of contiguous
percent ranges collectively encompassing a range of zero
percent to one hundred percent;
v11. calculate a remaining time for completion for each percent
range in the input data,
constitute "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." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to
certain arrangements involving contractual relations are directed to abstract
ideas). Thus, assessing workflows based on predefined criteria and sizing of
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results for the evaluation of workflows is an "abstract idea" beyond the
scope of§ 101.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement, as discussed in Alice, and the concept of
assessing workflows based on predefined criteria and sizing of results for the
evaluation of workflows, at issue here. Both are squarely within the realm
of "abstract ideas" as the Court has used that term. That the claims do not
preempt all forms of the abstraction or may be limited to program code
development, do not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (citations omitted)
("And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.").
Claims 1 and 3, unlike the claims found non-abstract in prior cases,
use generic computer technology to perform data reception, transmission,
and linkage and do not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (finding claims not abstract because they
"focused on a specific asserted improvement in computer animation.").
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The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
"while adding the words 'apply it"' is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological
environment."' Stating an abstract idea while
adding the words "apply it with a computer"
simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a
computer amounts to a mere instruction to
"implemen[ t ]" an abstract idea "on . . . a
computer," that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of "additional featur[ e ]" that
provides any "practical assurance that the process
is more than a drafting effort designed to
monopolize the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (internal citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
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the data as a result amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d 1354; see also In re Katz
Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). In short, each
step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. See, e.g.,
Spec. ,r 39. Thus, the claims at issue amount to nothing significantly more
than instructions to apply the abstract idea of information access using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
We have reviewed all the arguments (Appeal Br. 8-23; Reply Br. 2-
7) Appellants have submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants assert that "independent claims 1 and 30-31 [sic.] as a
whole are directed to "estimating and using a remaining amount of time to
consistently schedule completion of development of a program code at
reduced development and customer cost." (Appeal Br. 10-11).
The difficulty here is that the claims have been drafted so that as a
whole they provide a result-oriented solution, but without the computer-
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centric details for accomplishing it. The Appellants argue over such details,
such as to "(i) reduce a development and customer cost of the program code
and (ii) "consistently schedule completion of the development of the
program code" (App. Br. 11) in an effort to show the claimed subject matter
is "rooted in computer technology." But, the claims do not reflect any more
than their result oriented details. Cf Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that
"[ o ]ur law demands more" than claim language that "provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it") and Elec. Power Grp., 830 F.3d at 1354 (explaining that claims are
directed to an abstract idea where they do not recite "any particular
assertedly inventive technology for performing [ conventional] functions").
Appellants also argue, the "key step in claims 1 and 3 pertaining to
what claims 1 and 3 are directed to the 'displaying' step." (Appeal Br. 13).
We disagree with Appellants because we find that the displaying step
is limited to insignificant extra solution activity not covered under 35 U.S.C.
§ 101. See, In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994) (recording
step of the claimed process is incapable of imparting patent-eligibility under
35 U.S.C. § 101).
Applicants assert that independent claims 1
and 3 improve the technology of workflow
assessment in the field of scheduling software
development, based on at least the following
limitation in independent claims 1 and 3: 'program
instructions to determine and display on a monitor
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a total remaining time to complete development of
the program code, . . . wherein the display of the
total remaining time to complete development of
the program code identifies a current state of a
workflow of the development of the program code
to: (i) reduce a development and customer cost of
the program code and (ii) consistently schedule
completion of the development of the program
code'.
(Appeal Br. 15).
We disagree with Appellants. Nothing in claims purports to improve
computer functioning or "effect an improvement in any other technology or
technical field." Alice, 134 S. Ct. at 2359. Nor do claims solve a problem
unique to the Internet. See DDR Holdings, LLC v. Hotels.com, L.P. 773
F.3d 1245, 1255. The question here is whether the claims as a whole "focus
on a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, the claims, as a
whole, are focused on satisfying certain contingencies to determine
"remaining time to complete development of ... program code." Claim 1.
We find this limitation to be a result or an affect, and not an improvement in
the technology of how a processor, memory, and program works. Thus, we
find no improvement in device technology here, but rather only the idea of
assessing workflows using a known device.
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Appellants argue, "Since the Examiner has not attempted to
demonstrate that the steps of independent claims 1 and 3 can be performed
entirely in the human mind, the Examiner's citation of Cybersource is not
persuasive." (Appeal Br. 13).
We disagree with Appellants' characterization of Cybersource
because its reference to steps being performed "entirely in the human mind"
was stated in immediate contrast to the holding in Research Corp. Techs. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). See CyberSource Corp v.
Retail Dec., Inc. 654 F.3d 1366, 1376 (Fed. Cir. 2011). That is, the
Cybersource holding was clear to show how the claims in Research Corp.
Techs were directed to the technical improvement of, "manipulation of
computer data structures ( e.g., the pixels of a digital image and a two-
dimensional array known as a mask) .... " Id.
Appellants further argue, "No method or system currently exists to
properly evaluate the cost and readiness for an automation package
containing workflows for the provisioning of servers and network devices
like routers and load balancers." (Appeal Br. 15).
We are not persuaded by Appellants' arguments because "the addition
of merely novel or non-routine components to the claimed idea [does not]
necessarily tum[] an abstraction into something concrete." Ultramercial,
Inc. v. Hula, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Citing to McRO, Appellants argue, the "rules in claims 1 and 3 enable
implementation of the improvement (in the technology of workflow
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assessment in the field of scheduling software development) realized via the
claimed limitations." (Appeal Br. 18).
We disagree with Appellants. The question is whether the claims as a
whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO at 1314. Here,
we find the focus of workflow assessment is an effect and not a specific
means or method that improves the relevant technology.
Appellants further argue, "[i]ndependent claims 1 and 3 recite the
following specific limitations that are not well understood, routine and
conventional for scheduling software development. ... " (Appeal Br. 21 ).
We understand the Examiner, through citations relying on prior court
decisions (See Final Act. 5-6) found that certain computer functions are
well-understood, routine, and conventional functions. These prior court
decisions adequately support this finding to satisfy the requirement to set
forth a primafacie case ofunpatentability under 35 U.S.C. § 101.
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims based on the record before us.
CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 1, 3, and 5-
14 under 35 U.S.C. § 101.
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DECISION
The decision of the Examiner to reject claims 1, 3, and 5-14 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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