Ex Parte DUQUETTE et al

Patent Trial and Appeal Board

Dec 28, 2018

13483337 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/483,337 05/30/2012
37945 7590 01/02/2019
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
MARK DUQUETTE
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.
CAM920110062US2 1489
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DUQUETTE, SRI VYTHESW ARAN, and
KEVIN J. WILLIAMS
Appeal2017-006441
Application 13/483,337 1
Technology Center 3600
Before JAMES R. HUGHES, JOHN D. HAMANN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12 and 14-21, which are all the claims pending in this
application. Claim 13 is canceled. App. Br. 23. 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 Corporation. App. Br. 3.
Appeal2017-006441
Application 13/483,337
STATEMENT OF THE CASE
Introduction
Appellants' application relates to estimating a new project schedule
based on user-provided high level parameters and historic project data.
Spec. ,r 2. Claims 1 and 9 illustrate the appealed subject matter and read as
follows:
1. A computer implemented method for generating a product
development schedule comprising:
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, maintaining a data warehouse for historic projects,
wherein said data warehouse comprises a plurality of different
artifacts per project, human and organizational resources
consumed while producing each of the different artifacts, inter-
artifact temporal dependencies, and timelines for producing each
of the artifacts;
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, receiving a set of parameters for a new project, wherein
said parameters define a scope of the new project at a level of
abstraction above an artifact level;
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, establishing without a user intervention a set of key
artifacts and stages needed for completing the new project, where
the set of key artifacts and stages are consistent with the set of
parameters;
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, determining a set of at least two historic projects having
data that is maintained in the data warehouse, wherein the at least
two historic projects have at least one artifact similar to one of
the key artifacts or have at least one stage similar to one of the
stages of the new project, wherein similarity determination is
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based on metadata associated with the set of at least two historic
projects;
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, evaluating without the user intervention each historic
artifact and historic stage associated with the set of at least two
historic projects to determine an approximate timeline for the key
artifacts and the stages for the new project; and
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, generating a schedule for the new project, wherein the
schedule breaks down the new project by the stages and the key
artifacts and provides the estimated timeline.
9. A computer implemented method for generating a project
schedule comprising:
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, receiving a set of high level parameters as user input
for a new project;
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, querying a data warehouse maintaining records for a
plurality of historic projects to determine a subset of the historic
projects having statistically defined similarities to the new
project, said similarities being based on a correspondence
between the set of high level parameters and details of the
subset of the historic projects;
one or more computers, comprising at least one processor
executing program instructions of a non-transitory storage
medium, generating a schedule for the new project having a
plurality of stages, wherein a plurality of artifacts are to be
generated in the stages, wherein the stages and the artifacts are
not defined by the user input, the high level parameters, or by
any other manual input entered for the new project, wherein the
stages and artifacts are heuristically determined from specifics
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maintained in the data warehouse for the subset of historic
projects, wherein the schedule details timelines for each of the
stages and artifacts, wherein said timelines are heuristically
determined in a data driven manner from data of the subset of
historic projects.
The Examiner's Rejections
Claims 1-8, 10, and 18 stand rejected under 35 U.S.C. § 112(b) or
pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventors regard as the invention. Final Act. 2-3.
Claims 1-12 and 14-21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3--4.
Claims 1-3, 5, 9-11, 15, and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over Gordon et al. (US 2013/0024231 Al; Jan. 24, 2013),
Carlson et al. (US 2013/0132440 Al; May 23, 2013), Kayahara et al. (US
2005/0278209 Al; Dec. 15, 2005), and Richardson et al. (US 7,069,229 Bl;
June 27, 2006). Final Act. 3-25.
The Examiner adds Thywissen (US 2008/0235155 Al; Sept. 25,
2008) to reject claim 4 (Final Act. 25-26); O'Cull et al. (US 2006/0200372
Al; Sept. 7, 2006) to reject claims 6-8 (Final Act. 27-29); Hirano et al. (US
2004/0128189 Al; July 1, 2004) to reject claim 12 (Final Act. 29-30);
Sparago et al. (US 7,350,185 B2; Mar. 25, 2008) to reject claim 14 (Final
Act. 30); Bugayenko (US 2011/0196798 Al; Aug. 11, 2011) to reject claim
16 (Final Act. 31 ); Yurekli et al. (US 2008/0066072 A 1; Mar. 13, 2008) to
reject claim 17 (Final Act. 32); Ugai (US 2008/0027927 Al; Jan. 31, 2008)
to reject claim 18 (Final Act. 33-34); and Cantor et al. (US 2009/0299782
Al; Dec. 3, 2009) to reject claims 19 and 20 (Final Act. 34-37).
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Claims 1-12 and 14-21 stand provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 18 and 21-
38 of co-pending Application No. 13/401,913. Final Act. 38.
ANALYSIS
Indefiniteness
Appellants do not argue the Examiner erred in rejecting claims 1-8,
10, and 18 under 35 U.S.C. § 112(b) as indefinite. App. Br. 11. Instead,
Appellants proposed an amendment to claim 1 concurrently with the Appeal
Brief to address the indefiniteness rejection. Id. The Examiner did not enter
the proposed amendment. September 2, 2016 Advisory Action.
Accordingly, the claims stand as rejected under 35 U.S.C. § 112(b). We,
therefore, summarily sustain the indefiniteness rejection of claims 1-8, 10,
and 18.
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. ( alteration in original) ( quoting Mayo,
566 U.S. at 72-73).
Alice Step One
"[T]he 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." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. 62 (1853)). "We therefore look to whether the claims ...
focus on a specific means or method that improves the relevant technology
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or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery." McRO, 837 F.3d at 1314.
Appellants argue the Examiner's rejection under 35 U.S.C. § 101 is
unclear because it appears that two different and distinct abstract ideas are
presented. App. Br. 11. The Examiner finds claim 1 is directed to the
abstract ideas of project schedule modeling, comparing new and stored
information, and using rules to identify options. Final Act. 3. Appellants'
argument that the Examiner erred is unpersuasive because combining several
abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
("Adding one abstract idea ... to another abstract idea ... does not render
the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining the pending claims
were directed to a combination of abstract ideas).
Appellants do not provide any other argument regarding the "abstract
idea" prong of the Alice test. Accordingly, Appellants have not persuaded
us the Examiner erred in finding claim 1 is directed to an abstract idea.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
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activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359
(second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellants argue the claims are directed to an improvement to the
technical field of generating schedules for computing projects and, therefore,
amount to "significantly more" than an abstract idea. App. Br. 11-13.
Appellants argue the claimed process generates a new artifact, a project
schedule estimate, that did not exist prior to the execution of the claimed
steps. Id. at 12. Appellants argue only situations where no new artifact has
been created have been found to be ineligible under 35 U.S.C. § 101.
Appellants have not persuaded us of Examiner error. Claim 1 is
generally directed to a computer implemented method for generating a
product development schedule. The method includes maintaining a data
warehouse that stores data on historic projects. The method also includes
receiving data regarding a new project and comparing the received data to
similar historic projects in the data warehouse. The data regarding the
historic projects is used to determine an approximate timeline for the new
project and that timeline is used to generate a schedule for the new project.
Thus, claim 1 recites a business method for generating a product
development schedule using historic project data. The computer limitations
in claim 1 are merely tools to achieve this method. The Federal Circuit in
DDR Holdings found claims necessarily rooted in computer technology to
be patent eligible, but issued a relevant warning:
We caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
argued that its claims were "directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before." But this
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alone could not render its claims patent-eligible. In particular,
we found the claims to merely recite the abstract idea of
"offering media content in exchange for viewing an
advertisement," along with "routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir.
2014) (citations omitted).
The claims in DDR Holdings addressed a problem unique to the
Internet in a manner that was "not merely the routine or conventional use of
the Internet." Id. at 1259. In particular, rather than the expected behavior of
simply sending the website visitor to a third-party website, the claimed
invention behaved in a manner different than expected by sending a website
visitor to a hybrid web page presenting information from a third-party with
the look and feel of the host website. Id. at 1258-59. In contrast, Appellants
have not identified any unconventional behavior by the recited computer
limitations in claim 1. Instead, claim 1 recites using conventional computer
techniques such as retrieving data from a database, comparing data, and
making determinations based on these comparisons. The nature of claim 1
as a whole is not to define a specific technological improvement, but to
recite the steps necessary to perform the abstract idea itself. Claim 1
employs "generic processes and machinery" to achieve results, and is not
focused on "a specific means or method that improves the relevant
technology." McRO, 837 F.3d at 1314.
Appellants' argument that the claims generate a new artifact and,
therefore, cannot be patent ineligible is also unpersuasive. Appellants have
not cited (see App. Br. 11-13), nor have we found, any case that states that a
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method that creates a new artifact is automatically patent eligible. To the
contrary, other cases have found claims that created new "artifacts" (such as
a product development schedule here or the financing packages in Credit
Acceptance) to be patent-ineligible. Accordingly, we are not persuaded by
Appellants' argument.
Our reviewing court has also "made clear that mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology." Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in
Credit Acceptance, the focus of the claims is on the business practice, "and
the recited generic computer elements 'are invoked merely as a tool."' Id.
(citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see
also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed.
Cir. 2015) (collecting cases).
Appellants also argue the "numerous" references cited against the
claims in the prior art rejections show the claims recite limitations that
improve upon conventional systems in a meaningful way. App. Br. 13.
Although the second step of the Alice framework is termed a search for an
"'inventive concept,"' the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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., 134 S. Ct. at 2355. A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at
89--90. Accordingly, even if the claims were not rejected as obvious (which
is not the case here where the claims stand rejected as obvious under 35
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U.S.C. § 103), the claims could nonetheless be directed to patent-ineligible
subject matter. Appellants' argument is, therefore, unpersuasive.
For these reasons, we agree with the Examiner that the claims do not
recite an "inventive concept" sufficient to transform the claims from an
abstract idea to a patent eligible application. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 1. We also sustain the
rejection of independent claims 9 and 21, for which Appellants provide no
separate argument. See App. Br. 11-13; Reply Br. 2-3. We also sustain the
rejection of dependent claims 2-8, 10-12, and 14-20, for which Appellants
provide no separate argument. See id.
Obviousness
Claim 1
The Examiner finds Gordon teaches
determining a set of at least two historic projects having data
that is maintained in the data warehouse, wherein the at least
two historic projects have at least one artifact similar to one of
the key artifacts or have at least one stage similar to one of the
stages of the new project, wherein similarity determination is
based on metadata associated with the set of at least two
historic projects.
Final Act. 6-7.
Appellants argue the Examiner erred because Gordon teaches
determining whether a project type for a received project matches a
previously stored project and automatically determining tasks based on the
project type. App. Br. 14. Appellants argue Gordon is silent regarding
determining whether historic projects have at least one data artifact or stage
similar to a new project based on metadata associated with the historic
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projects, and any similarity determination is based solely on the project type.
Id.
The Examiner finds Gordon teaches using a historic project to
estimate similar task duration in a new project and, therefore, teaches the
recited "determining" step. Ans. 3 ( citing Gordon ,r 43). The Examiner
finds the claimed "metadata" is merely "data that provides information about
other data" and the historic task data is metadata because it provides
information about historic projects. Id.
Appellants have persuaded us of Examiner error. The Examiner finds
the historic projects, which are identified based on the project type in
Gordon, have similar tasks to the current project. See Ans. 3. Although that
may be true, the Examiner's findings do not address the requirement that the
"similarity determination is based on metadata associated with the set of at
least two historic projects" where the similarity is between a historic project
and the current project's artifacts or stages.
We, therefore, do not sustain the obviousness rejection of independent
claim 1. We also do not sustain the obviousness rejection of independent
claim 21, which recites commensurate limitations, or dependent claims 2-8
and 20, which depend from claim 1.
Claim 9
Appellants argue the Examiner erred in finding Gordon teaches
querying a data warehouse maintaining records for a plurality
of historic projects to determine a subset of the historic projects
having statistically defined similarities to the new project, said
similarities being based on a correspondence between the set of
high level parameters and details of the subset of the historic
projects,
as recited in claim 9. App. Br. 17-18.
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The Examiner notes the Specification does not define the term
"statistically defined similarities" and concludes this term covers a similarity
determined quantitatively. Ans. 5. The Examiner finds Gordon teaches the
disputed limitation, including the statistically defined similarities, by
disclosing comparing a project type for a new project against project types
for historic projects to identify relevant tasks for the new project. Id. (citing
Gordon ,r 27).
Appellants argue the Examiner erred because Gordon is silent
regarding "statistically defined similarities" between the new project and
historic projects. We agree with Appellants that the Examiner has failed to
establish that Gordon teaches the disputed limitation. The Examiner
concludes "statistically defined similarities" includes "quantitatively"
determining a similarity, but the Examiner has failed to explain how
Gordon's comparison of project type to project type teaches or suggests
determination "based on a correspondence between the set of high level
parameters and details of the subset of the historic projects." In particular, if
the project type is the "set of high level parameters," as the Examiner seems
to find, the Examiner has not identified any "details of the subset of the
historic projects" as recited in claim 9.
Accordingly, even if the Examiner's definition of "statistically
defined similarities" is correct, the Examiner has failed to establish that
Gordon teaches the disputed limitations. We, therefore, do not sustain the
obviousness rejection of claim 9. We also do not sustain the obviousness
rejections of claims 10-12 and 14-19, which depend directly or indirectly
from claim 9.
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Nonstatutory Double Patenting
Appellants have provided no argument regarding the Examiner's
nonstatutory double patenting rejection. We, therefore, summarily sustain
the nonstatutory double patenting rejection of claims 1-12 and 14-21.
DECISION
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 1-12 and 14-21. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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