Ex Parte Cottingham et al

Patent Trial and Appeal Board

Mar 30, 2018

13251232 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/251,232 10/01/2011
55498 7590 04/03/2018
Vista IP Law Group, LLP (Oracle)
2160 Lundy Avenue
Suite 230
San Jose, CA 95131
FIRST NAMED INVENTOR
Heather COTTINGHAM
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.
ORA120107-US-NP 1005
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
docketing@viplawgroup.com
ev@viplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEATHER COTTINGHAM, ELIZABETH DAWN ABRAHAM,
and BOPINDERJIT SINGH
Appeal 2016-0044 71 1
Application 13/251,2322
Technology Center 3600
Before PHILIP J. HOFFMANN, CYNTHIAL. MURPHY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-30. We have jurisdiction under
§ 6(b ). We AFFIRM.
1 Our Decision references Appellants' Specification ("Spec.," filed Oct. 1,
2011), Appeal Brief ("Appeal Br.," filed Aug. 26, 2015), and Reply Brief
("Reply Br.," filed Mar. 22, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed Feb. 11, 2015) and Answer ("Ans.," mailed
Jan. 22, 2016).
2 Appellants identify Oracle International Corporation as the real party in
interest. Appeal Br. 3.
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Application 13/251,232
SUBJECT MATTERON APPEAL
The invention relates to "implementing expense entries by using
mobile devices." Spec. if 33. Claims 1, 11, and 21 are the independent
claims on appeal. Independent claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for performing expense item entry on a mobile
device, comprising:
using at least one processor that is programmed or
configured for performing a process, the process comprising:
identifying an enterprise expense application at a remote
server, wherein the enterprise expense application stores a set of
enterprise-specific reference data, the set of enterprise-specific
reference data corresponding to policies established by an
enterprise to govern expenses incurred by one or more
employees of the enterprise;
providing a mobile expense application to a user, the
mobile expense application interfacing with the enterprise
expense application;
periodically downloading, from the enterprise expense
application, at least a portion of the set of enterprise-specific
reference data to the mobile expense application to perform
validation checks on one or more expense entries;
generating an expense entry on the mobile expense
application;
capturing, through a location capturing device, location
data pertaining to movement of the mobile device to populate at
least a portion of required fields of the generated expense entry;
determining another portion of required fields for the
expense entry for which data is not entered;
auto-populating additional data for the other portion of
required fields for the expense entry from a processing
mechanism on the mobile device;
validating the expense entry for policy violations by the
mobile device using the downloaded enterprise-specific
reference data stored at the mobile device; and
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sending the expense entry to the remote server comprising
the enterprise expense application, such that the expense entzy
created on the mobile device is uploaded for processing at the
enterprise expense application.
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1-30under 35U.S.C.§101 as non-statutory subject matter;
claims 1-30under 35U.S.C.§112, frrst paragraph, for failing to
comply with the written description requirement; 3 and
claims 1-30under 35U.S.C.§102(a) as anticipated by Dinamani et
al. ("Dinamani," US 7,908, 191 Bl, iss. Mar. 15, 2011).
ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims l-30 as a gToup. Appeal Br. 11-19;
Reply Br. 2-----8. We select independent claim 1 as representative. The
remaining clanns of the group stand or fall with independent claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S. C. § 101. The
Supreme Court, however, has long interpreted§ 101 to include implicit
3 The Examiner has withdrawn this rejection as to the limitation reciting
"identifying an enterprise expense application at a remote server, wherein
the enterprise expense application stores a set of enterprise-specific
reference data, the set of enterprise-specific reference data corresponding to
policies established by an enterprise to govern expenses incurred by one or
more employees of the enterprise," in each of the independent claims.
Ans. 4.
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exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g.,Alice Corp. Pty. Ltd. v. CLSBankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathologyv. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the frrst step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting independent claim 1 under 3 5 U.S. C. § 101 as
non-statutory subject matter, i.e., subject matter judicially excepted from
statutory subject matter, the Examiner analyzes the claim using this two-step
framework. Final Act. 5. More specifically, pursuantto the frrst step, the
Examiner determines the claim is directed to the concept of "performing
expense item entry and generating expense reports," which is a fundamental
economic practice and a method of organizing human activities, and,
therefore, an abstract idea. Id. (emphasis omitted). Under the second step,
the Examiner determines the claim does not recite limitations that are
significantly more than the abstract because the claim does not recite an
improvement to another technology or technical field, an improvement to the
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functioning of the computer itself, or meaningful limitations beyond
generally linking the use of the abstract idea to a particular technological
environment. Id. The Examiner further determines that the claim
limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Id.
Under the frrst step of the patent-eligibility analysis, Appellants argue
"[ t ]he mere mention of' expense entries' does not mean that [independent
claim 1] comprise[ s] patent-ineligible subject matter." Appeal Br. 14--15;
Reply Br. 4--5. Appellants also assert that independent claim 1 is not
directed to an abstract idea, but rather recites two computing systems that are
inextricably tied with a computer based communication and notification
scheme interconnecting computers. Reply Br. 2-3. Appellants' arguments
do not apprise us of error.
Our reviewing court has instructed that "[ u ]nder step one of
Mayo/Alice, the claims are considered in their entirety to ascertain whether
their character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)
(emphasis added). For computer-implemented inventions in particular, such
as the present invention, "the first step in the Alice inquiry ... asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfish, LLC v.
Microsoft Corp., 822F.3d1327, 1335-36 (Fed. Cir. 2016).
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Here, independent claim 1 recites a method for performing expense
item entry on a mobile device, and the method comprises the steps of:
"identifying an enterprise expense application at a remote server";
"providing a mobile expense application to a user"; "periodically
downloading, from the enterprise expense application, at least a portion of
the set of enterprise-specific reference data to the mobile expense
application"; "generating an expense entry on the mobile expense
application"; "capturing ... location data pertaining to movement of the
mobile device to populate at least a portion of the required fields of the
generated expense entry"; "determining another portion of required fields for
the expense entry for which data is not entered"; "auto-populating additional
data for the other portion of required fields for the expense entry";
"validating the expense entry for policy violations by the mobile
device using the downloaded enterprise-specific reference data"; and
"sending the expense entry to the remote server ... for processing." Thus,
according to independent claim 1, these steps enable expense entries to be
generated at one location and sent for processing at another location.
Similarly, the Specification explains that
[t]he problem with [the conventional] approach is that it
ignores the fact that many types of expenses occur while the user
is away from his computer, and therefore the prior art
architecture of Fig. 1 forces the user to delay entry of the expense
lines until the user can later access a workstation or
computer 102 that is within the company network.
Spec. if 5. The Specification further describes that "there is a need for an
improved approach to allow a user to enter and edit expense entries."
Spec. if 6. The Specification also explains that "[t]he present disclosure
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provides an improved method, system, and computer program product for
implementing expense entries by using mobile devices." Id. if 33.
Independent claim 1 also recites a processor, and, as Appellants point
out (Reply Br. 3), the claim further recites two computing systems that
communicate with each other, namely a remote server having an enterprise
expense application and a mobile device having a mobile expense
application. The remote server and mobile device being at different
locations enables the processor to generate expense entries at one location
and send them to another location for processing. In other words, the
claimed invention uses the processor and computing devices as tools to
allow expense entries to be generated at one location and processed at
another. The focus of the claimed invention is not on an improvement in
computer capabilities, but rather on a process for expense item entry for
which cmnputing devices are invoked merely as tools. Accordingly,
Appellants do not apprise us of error in the Exa1niner' s deten11ination that
the character ofindependent claim 1, as a whole, is directed to '"performing
expense item entry and generating expense reports."
Appellants further contend that independent claim 1 is directed to "the
mobile capture of data, formatting[,] and transmittal of data."
Appeal Br. 13. Although we disagree with Appellants that the claim is
directed to "the mobile capture of data, formatting and transmittal of data"
for the reasons above, Appellants' argument is nonetheless unpersuasive of
error. The Federal Circuit has held that claims directed to collecting
information, analyzing it, and displaying certain results are directed to an
abstract idea. Elec. Power Grp., LLCv. Alstom S.A., 830F.3d1350, 1353-
54 (Fed. Cir. 2016). Consequently, even if independent claim 1 is directed
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to "the mobile capture of data, formatting[,] and transmittal of data," as
Appellants argue, the claim would still be directed to an abstract idea.
Appellants additionally assert that independent claim 1 is not directed
to an abstract idea because, like the patent-eligible claims in DDR Holdings,
LLC v. Hotels.com, L.P., 773F.3d1245, 1256-57 (Fed. Cir. 2014), the
claim offers a technologically-rooted solution to a problem specifically
arising in the realm of computer networks, namely the inability to accurately
capture data for a large number of employees. Appeal Br. 13-14. The
inability to accurately capture data for a large number of employees,
however, is not a problem unique to computers. Consequently, we see no
parallel between independent claim 1 and the claims in DDR Holdings, and
Appellants' reliance on DDR Holdings does not apprise us of error in the
Examiner's determination that independent claim 1 is directed to the abstract
idea of "performing expense item entry and generating expense reports."
Appellants further argue that independent claim 1 is not directed to a
fundamental economic practice or method of organizing human activity.
Appeal Br. 13; Reply Br. 5---6. Appellants, however, do not address why
"performing expense item entry and generating expense reports" is not a
fundamental economic practice or a method of organizing human activity.
Accounting for expenses is a fundamental economic practice long prevalent
in our system of commerce. Furthermore, we see no meaningful distinction
between the concept of "performing expense item entry and generating
expense reports" and other methods of organizing human activities that the
courts have held to be abstract ideas, such as "budgeting" in Intellectual
Ventures I LLCv. Capital One Bank (USA), 792 F.3d 1363, 1367---68 (Fed.
Cir. 2015).
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Seeing no error in the Examiner's determination that independent
claim 1 is directed to an abstract idea pursuant to the frrst step of the
patent-eligibility analysis, we tum to Appellants' arguments under the
second step. Appellants allege that independent claim 1 recites significantly
more than the abstract idea because the claim limitations confme the abstract
idea to a particularly useful application, namely the efficient capture,
formatting, and transmittal of data from a mobile device to a server.
Appeal Br. 15-1 7. Appellants similarly contend that independent claim 1
includes limitations that improve the existing technology of data collection
and organization. Id. at 17-19; Reply Br. 8. Appellants also argue that
independent claim 1 includes limitations that go beyond functions of a
general purpose computer because the claim limitations, as an ordered
combination, facilitate accurate capture, validation, and formatting of the
data so that the data can be consumed by a remote server. Appeal Br. 19.
Appellants' arguments are not convincing.
Appellants ostensibly maintain that independent claim 1 recites
significantly more than the abstract idea because the claimed invention
improves the remote capture, validation, and formatting of expense entry
data. There is no indication, however, that the claimed invention improves
the capture, validation, formatting, collection, or organization of data.
Rather, the claimed invention, via the remote capture, validation, and
formatting of expense entry data, improves the accounting of expenses by
enabling a user to enter expenses remotely from a server that processes the
expenses entries. See, e.g., Spec. if 35 ("One key advantage of this approach
is that it allows the user to generate expense entries more in alignment with
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the location/way that many expense [sic] are actually generated, e.g., while
the user is away from the office computer.").
Furthermore, there is no indication that the implementation of the
claimed steps, including the steps of capturing and validating the expense
entry data at the mobile device, requires something other than generic
computing components performing generic computing functions that are
well-known, routine, and conventional, such as receiving, analyzing, and
transmitting data. See Spec. iii! 131-13 6 (describing the system
architecture). As such, we fail to see how the claimed invention is
something other than the generic computer implementation of an improved
business practice, which is insufficient for patent-eligibility. See DDR
Holdings, 773 F.3d at 1256 ("[T]hese claims [of prior cases] in substance
were directed to nothing more than the performance of an abstract business
practice on the Internet or using a conventional computer. Such claims are
not patent-eligible.").
Appellants additionally argue that independent claim 1 recites
significantly more than the abstract idea because it recites limitations that
add new information to the gathered data, thereby transforming data.
Reply Br. 6-7. Appellants' argument does not apprise us of error.
As an initial matter, the machine-or-transformation is not the standard
for determining whether a claim recites significantly more than the abstract
idea. DDR Holdings, 773 F.3d at 1256 ("[S]atisfying the machine-or-
transformation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transfon11ations or machine implementations infuse an
otherwise ineligible clain1 with an 'inventive concept"'). Nonetheless, a
transformation of data is not sufficient to meet the transformation prong of
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the test. See Gottschalkv. Benson, 93 S. Ct. 253, 257 (1972) (holding that a
computer-based algorithm that merely transforms data from one form to
another is not patent-eligible).
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that independent claim 1 is patent-ineligible, i.e.,
judicially excepted from statutory subject matter. Accordingly, we sustain
the rejection of claims 1-30 under 35 U.S.C. § 101.
Written Description
The Examiner finds the disclosure does not provide support for the
limitation reciting "periodically downloading, from the enterprise expense
application, at least a portion of the set of enterprise-specific reference data
to the mobile expense application to perform validation checks on one or
more expense entries," in each of independent claims 1, 11, and 21.
Final Act. 6. According to the Examiner, although the limitation recites
"periodically," the disclosure does not mention a time or a period of
downloading, or how long the period is between downloads. Ans. 4--5.
In contrast, Appellants argue the disclosure provides sufficient
support for this limitation. Appeal Br. 23-24 (citing Spec. iii! 51, 52);
Reply Br. 9-10. We agree with Appellants.
The test for sufficiency of the written description requirement is
'"whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the clain1ed
subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598F.3d1336, 1351 (Fed. Cir. 2010) (en bane) (citations omitted). As
Appellants point out (Appeal Br. 24), paragraph 52 explains "[a]fterthe first
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login, whenever the user invokes the mobile application, the user will be
navigated to the main interface screen to perform the mobile expense
functions . . . [ i]n some embodiments, new reference data may be
downloaded or synchronized at that time." Paragraph 52 further explains
that "[i]f the user accesses the mobile application in a disconnected mode
(e.g., without a wireless connection or a VPN/Network connection), the
mobile application will not sync any reference data." Given the
Specification describes that the mobile application syncs with the server at
various times, such as when a user invokes the mobile application or
connects to the server, the disclosure reasonably conveys to those skilled in
the art that, as of the filing date, the inventors had possession of the claimed
subject matter, including "periodically" downloading reference data, as
recited in the disputed limitation.
In view of the foregoing, the Examiner has not sufficiently shown that
the disputed limitation lacks written description support. We, therefore, do
not sustain the Examiner's rejection of independent claims 1, 11, and 21 and
dependent claims 2-10, 12-20, and22-30under 35 U.S.C. § 112, frrst
paragraph.
Anticipation
Appellants argue that Dinamani does not disclose "validating the
expense entry for policy violations by the mobile device using the
downloaded enterprise-specific reference data stored at the mobile device,"
as recited in independent claim 1. Appeal Br. 20-21. According to
Appellants, there is no disclosure of using enterprise-specific reference data
to validate the expense entry because '"reconciliation' in Dinamani is
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performed manually by the user himself to specify 'which of the tracked
data is business related and can be applied to business related expense
reports.'" Id. at20 (emphasis omitted) (quotingDinamani 9:35-37).
Appellants' argument is convincing.
For disclosing the disputed limitation of independent claim 1, the
Examiner relies on Dinamani' s teaching of reconciling tracked data.
Final Act. 8 (citing Dinamani 9:33--46); Ans. 5. As Appellants' point out
Dinamani discloses that reconciliation involves determining which tracking
data, i.e., expense entry, is business related. Dinamani 9:33-37;
Appeal Br. 20. The cited portion ofDinamani, however, does not disclose
how a user determines that the data is business related. In other words,
Dinamani does not disclose that reference data is reconciled, i.e., validated,
using downloaded enterprise-specific reference data stored at the mobile
device, as recited in the disputed limitation.
In view of the foregoing, there is insufficient support for the
Examiner's fmding that Dinamani discloses "validating the expense entry
for policy violations by the mobile device using the downloaded
enterprise-specific reference data stored at the mobile device," recited in
independent claim 1. Each of independent claims 11 and 21 includes the
same limitation, and the Examiner's rejection of independent claims 11 and
21 is based on the same deficient fmding. Final Act. 9. Accordingly, we do
not sustain the Examiner's rejection of independent claims 1, 11, and 21 and
dependent claims 2-10, 12-20, and22-30under 35 U.S.C. § 102(a).
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DECISION
The Examiner's decision to reject claims 1-30 under 35 U.S.C. § 101
is affrrmed.
The Examiner's decision to reject claims 1-30under35 U.S.C. § 112,
frrst paragraph, is reversed.
The Examiner's decision to reject claims 1-30under35 U.S.C.
§ 102( a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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