Ex Parte DUECK et al

Patent Trial and Appeal Board

Sep 14, 2018

13315665 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/315,665 12/09/2011
74739 7590 09/18/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Brian DUECK
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.
20 ll -0286US03 7931
EXAMINER
SHUI,MING
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN DUECK and AHMAD NASER ABDELRAHMAN
Appeal2017-004363
Application 13/315,665 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MEREDITH C. PETRA VICK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 5-9, 12-16, and 19-22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify Oracle International Corporation as the real party
in interest. Appeal Br. 2.
Appeal2017-004363
Application 13/315,665
ILLUSTRATIVE CLAIM
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to decouple a fulfillment flow from a
fulfillment topology, the decoupling comprising:
creating the fulfillment flow by combining one or more
fulfillment patterns to generate fulfillment metadata, wherein
each fulfillment pattern comprises one or more fulfillment
functions and one or more dependencies, and wherein
fulfillment topology information that comprises fulfillment
provider information is hidden from the fulfillment flow;
partitioning an order electronically received from an
order capture system into one or more order components using
a decomposition sequence, wherein the order comprises one or
more order lines, wherein the decomposition sequence
comprises one or more routing rules, wherein each routing rule
comprises persistent logic that determines which order line of
the order is applied to which fulfillment provider and further
comprises fulfillment topology information that comprises
fulfillment provider information, and wherein each routing rule
determines a target fulfillment provider;
wherein the partitioning the order into the one or more
order components further comprises using the one or more
routing rules to apply data corresponding to each order line of
the order to an order component associated with a fulfillment
provider; and
generating an orchestration plan for the order by applying
one or more dependencies of the fulfillment flow and the one or
more routing rules to the one or more order components,
wherein the orchestration plan comprises a metadata-driven
executable process that comprises one or more steps for
fulfilling the order and that executes on the one or more order
components, and wherein the orchestration plan comprises the
fulfillment topology information.
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Application 13/315,665
CITED REFERENCES
Hirth et al. US 2003/0171962 Al
(hereinafter "Hirth")
Wittmer et al. US 2005/0197910 Al
(hereinafter "Wittmer")
Peyser et al. US 7,729,944 Bl
(hereinafter "Peyser")
REJECTIONS
Sept. 11, 2003
Sept. 8, 2005
June 1, 2010
I. Claims 1, 2, 5-9, 12-16, and 19-22 are rejected under 35
U.S.C. § 101 as ineligible subject matter.
II. Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19, 21, and 22 are rejected
under 35 U.S.C. § I03(a) as unpatentable over Hirth and Wittmer.
III. Claims 7, 14, and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Hirth, Wittmer, and Peyser.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply'" these basic tools of scientific and
technological work. Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
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(2014) (citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citations
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
As to the first step of the Alice framework, the Examiner states that
the claims are "directed to an order fulfillment process in which the
fulfillment provider is hidden from the process, which is a fundamental
economic practice, and thus an abstract idea." Final Action 4.
Contrary to the Examiner's characterization of the claimed subject
matter, the Appellants contend that "[t]he pending claims are directed to a
creating the fulfillment flow by combining one or more fulfillment patterns
to generate fulfillment metadata." Appeal Br. 5.
The Appellants also argue that "none of the claims are directed to any
of the abstract ideas enumerated in Alice." Appeal Br. 5. Further, the
Appellants contend:
For the instant application, the alleged abstract idea shows no
similarities to the abstract ideas identified by the courts. The
Examiner further summarizes the abstract idea as "an order
fulfillment process in which the fulfillment provider is hidden
from the process," and then compares this summary to abstract
ideas identified by the courts. See Office Action at page 4. The
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Examiner is essentially performing an abstraction of the alleged
abstract idea, and generalizing the alleged abstract idea at such
a high level (i.e., fundamental economic practice) that it no
longer has ANY relationship to the recited limitations.
Id. at 6-7.
Yet, "[a]n abstract idea can generally be described at different levels
of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed.
Cir. 2016). Although, as our reviewing court has cautioned, characterizing
claims at a "high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
There does not appear to be any such violation in this aspect of the
Examiner's analysis, however - particularly insofar as the Examiner
determines that, "[ e ]ven assuming the claims were directed to the creation of
a fulfillment flow as appellant asserts, the creation of a fulfillment flow
would also be an abstract idea." Answer 3.
Nor are we persuaded that the Examiner erred in applying the first
Alice step, based upon the Appellants' assertion that the claims "do not
preempt all methods and systems for order fulfillment." Appeal Br. 6.
Nevertheless, "[ w ]bile 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).
Regarding the second Alice step, the Examiner identifies certain
"claim elements describ[ing] steps utilized by a computing apparatus to
perform the fulfillment process," which "can be performed without or
without the assistance of a computer and is [sic] similar to other methods
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and devices that have been found to be directed to abstract ideas." Final
Action 4--5. The Examiner also identifies the recited "non-transitory
computer-readable medium" and "processor" as "additional claim elements"
that, either separately or in combination, "do not amount to be significantly
more than the abstract idea because they recite generic and conventional
computer hardware and processing that would be utilized in a conventional
computer implementation of the abstract idea." Id. at 5---6.
The Appellants contend that the Examiner erred in applying the
second Alice step, because the claims recite "unconventional features" that
constitute significantly more than the identified abstract idea. Appeal
Br. 10. Specifically, the Appellants argue that the "partitioning an order"
and the "generating an orchestration plan for the order" steps are
unconventional; these steps are set forth in independent claim 1, as follows:
partitioning an order electronically received from an
order capture system into one or more order components using
a decomposition sequence, wherein the order comprises one or
more order lines, wherein the decomposition sequence
comprises one or more routing rules, wherein each routing rule
comprises persistent logic that determines which order line of
the order is applied to which fulfillment provider and further
comprises fulfillment topology information that comprises
fulfillment provider information, and wherein each routing rule
determines a target fulfillment provider;
wherein the partitioning the order into the one or more
order components further comprises using the one or more
routing rules to apply data corresponding to each order line of
the order to an order component associated with a fulfillment
provider; and
generating an orchestration plan for the order by applying
one or more dependencies of the fulfillment flow and the one or
more routing rules to the one or more order components,
wherein the orchestration plan comprises a metadata-driven
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executable process that comprises one or more steps for
fulfilling the order and that executes on the one or more order
components, and wherein the orchestration plan comprises the
fulfillment topology information.
In evaluating patent eligibility, the second Alice step considers
whether the claim limitations "involve more than performance of 'well-
understood, routine, [ and] conventional activities previously known to the
industry.'" Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134
S. Ct. at 2359). This so-called "inventive concept" inquiry of the Alice
framework "requires more than recognizing that each claim element, by
itself, was known in the art," because "an inventive concept can be found in
the non-conventional and non-generic arrangement of known, conventional
pieces." BASCOM Glob. Internet Servs. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016). Notably, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Yet, rather than addressing the substance of the second Alice step, by
applying the foregoing inquiry, the rejection states that the "partitioning an
order" and the "generating an orchestration plan for the order" elements
( among others) "can be performed with[ ] or without the assistance of a
computer" and are "similar to other methods and devices that have been
found to be directed to abstract ideas." Final Action 5. See also Answer 4--
5. Even insofar as the Examiner might be expressing a position that the
claimed elements identified by the Appellants should be regarded as generic
and conventional, the Examiner does not meet the burden of showing that
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the combination and arrangement of such elements fail to constitute a "non-
conventional and non-generic arrangement of known, conventional pieces."
See BASCOM, 827 F.3d at 1350.
The Examiner has not adequately established the absence of
additional claim elements that, as an ordered combination thereof, amount to
significantly more than the identified abstract idea itself, pursuant to the
second step of the Alice framework. Accordingly, we do not sustain the
rejection of independent claims 1, 8, and 15, along with their dependent
claims 2, 5-7, 9, 12-14, 16, and 19-22 under 35 U.S.C. § 101.
Obviousness
The Appellants argue independent claims 1, 8, and 15 as a group,
presenting two arguments for error in the obviousness rejection. See Appeal
Br. 12-15. Claim 1 is selected for analysis herein, pursuant to 37 C.F.R.
§ 4I.37(c)(l)(iv).
First, the Appellants argue that the cited prior art fails to teach or
suggest the following limitation of claim 1:
partitioning an order electronically received from an
order capture system into one or more order components using
a decomposition sequence, wherein the order comprises one or
more order lines, wherein the decomposition sequence
comprises one or more routing rules, wherein each routing rule
comprises persistent logic that determines which order line of
the order is applied to which fulfillment provider and further
comprises fulfillment topology information that comprises
fulfillment provider information, and wherein each routing rule
determines a target fulfillment provider.
See Appeal Br. 12. In particular, the Appellants contend that the Hirth
reference fails to teach or suggest using a "routing rule" to apply a specific
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"order line of the order" to a specific "order component" associated with a
specific "fulfillment provider" based upon information included within the
"routing rule." See id. at 13-14. The Appellants acknowledge that the
rejection relies upon the Wittmer reference (not Hirth) to teach the claimed
"order compris[ing] one or more order lines." See id. at 13 (citing Final
Action 7). However, the Appellants contend that Hirth is deficient, for the
purposes of the rejection, because "[r]ather than splitting an order into order
components that include order lines of the order, Hirth et al. merely
describes that the fulfillment coordination system splits an overall procedure
for fulfilling an order into multiple task sets or work packages." Id. at 14.
Yet, as the Examiner determines, the Appellants do not identify any
shortcoming in the cited prior art:
Hirth discloses assigning work packages, which are order
components ( defined as "data corresponding to a portion of an
order" (Spec[.] ,r 64)) to a specific provider based on the rules
for assigning providers and tasks. This would meet
[ A ]pellant[ s '] claim language of applying a routing rule to a
specific order line to a specific order component to a specific
provider based on the provider information included within the
routing rule.
Answer 5---6. Hirth discloses the identified features in paragraphs 40-43.
See Final Action 8. For example, Hirth states that "[a]fter the order has been
received, the fulfillment coordination engine splits the order into one or
more work packages based on a first set of rules or parameters" (Hirth ,r 40),
"[a]fter the order has been split into work packages, the fulfillment
coordination engine assigns the work packages to partners based on a second
set of rules or parameters" (id. ,r 41), and "[a]fter the work packages have
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been assigned to partners, the partners complete the tasks related to the work
packages" (id. ,r 42).
Further, insofar as the Appellants might contend that Hirth does not
disclose the recited "order compris[ing] one or more order lines," the
Examiner finds that Wittmer (rather than Hirth) teaches this feature. See
Answer 6. Although, to the contrary, the Appellants appear to admit this
point (see Appeal Br. 13, 15), such an argument would, in any event, amount
to the erroneous position of asserting a deficiency in one reference (i.e.,
Hirth) that is supplied, per the rejection, by another (i.e., Wittmer). See
Answer 6. See also In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.")
Accordingly, the Appellants' first argument is not persuasive of error
in the obviousness rejection of claim 1.
As a second argument, the Appellants contend that the cited prior art
fails to teach or suggest the following limitation of claim 1:
generating an orchestration plan for the order by applying
one or more dependencies of the fulfillment flow and the one or
more routing rules to the one or more order components,
wherein the orchestration plan comprises a metadata-driven
executable process that comprises one or more steps for
fulfilling the order and that executes on the one or more order
components, and wherein the orchestration plan comprises the
fulfillment topology information.
See Appeal Br. 12. In particular, the Appellants allege:
While Hirth et al. describes the fulfillment coordination system
generates and assigns multiple tasks [sic] sets to multiple
partners, where the tasks sets are performed by the partners
either in parallel or serially, the multiple task sets are not an
orchestration plan that includes a metadata-driven executable
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process that includes steps for fulfilling the order and that
executes on the order components, and that includes fulfillment
topology information.
Id. at. 14
The Appellants assert that Hirth fails to disclose the identified claimed
subject matter, but fails to explain the basis thereof. See Answer 6. Thus,
the Appellants do not present a viable argument asserting error in the
rejection, because "[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim." 37 C.F.R. § 4I.37(c)(l)(iv).
Furthermore, the Examiner points out that the Appellants' admission
that Hirth discloses a fulfillment coordination system that generates and
assigns multiple task sets to multiple partners, where the task sets may be
performed in parallel or serially, shows that Hirth meets the claimed
characterization of an "orchestration plan" of "a metadata-driven executable
process" that includes a set of "steps for fulfilling the order" and that
"executes on the one or more order components," and "wherein the
orchestration plan comprises the fulfillment topology information." See
Answer 6. See also Spec. ,r 68 ( defining "orchestration plan" and
"orchestration plan generation"). As the Examiner finds, Hirth discloses a
metadata-driven process that includes a set of process steps for fulfilling an
order. See Answer 6. See also Final Action 8 (citing Hirth ,r,r 41--43).
Further, the Examiner notes "that the steps in Hirth executes on various
order components, such as vendors, items required, shipment, processes to
assemble, etc." Answer 6.
Accordingly, the Appellants' second argument is not persuasive of
error in the obviousness rejection of claim 1.
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In view of the foregoing, the Appellants do not persuade us of error in
the rejection of independent claims 1, 8, and 15, such that-there being no
separate argument presented for the dependent claims - we sustain the
rejections of claims 1, 2, 5-9, 12-16, and 19-22 under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 2, 5-9,
12-16, and 19-22 under 35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 1, 2, 5-9, 12-
16, and 19-22 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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