Ex Parte Falkenberg et al

Patent Trials and Appeals Board

Apr 25, 2019

12967351 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/967,351 12/14/2010
75949 7590
IBM CORPORATION
C/0: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
04/29/2019
FIRST NAMED INVENTOR
Matthias Falkenberg
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.
DE920090080US 1 1463
EXAMINER
MINA,FATIMAP
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MATTHIAS FALKENBERG,
STEFAN ALFONS HEPPER, and STEPHAN LAERTZ
Appeal2018-007216
Application 12/967,351 1
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6, 7, 9-17, and 19-23. Claims 5, 8, and 18 have been canceled. 2
We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, International Business Machines Corporation is
the real party in interest (App. Br. 2).
2 We refer to Appellants' Specification ("Spec.") filed Dec. 14, 2010;
Supplemental Appeal Brief ("App. Br.") filed Aug. 3, 2017; and Reply Brief
("Reply Br.") filed July 5, 2018. We also refer to the Examiner's Final
Office Action ("Final Act.") mailed Jan. 25, 2017; Advisory Action mailed
April 6, 2017 ("Adv. Act."); and Answer ("Ans.") mailed May 11, 2018.
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Application 12/967,351
We reverse.
Exemplary Claim
Appellants' disclosed and claimed invention pertains to optimizing the
loading of a web page based on aggregated user preferences for Web page
elements of the Web page. Spec. ,r 1. Claims 1, 7, 14, 20, and 23 are
independent, and each recite similar limitations pertaining to dynamically
adapting a workflow of a content management system to publish content,
including determining which users are currently signed into a groupware
application and are currently active and available to approve an information
item (see infra, limitation [A] recited in claim 1, and commensurate
limitations in remaining independent claims 7, 14, 20, and 23). Claim 1,
reproduced below (with bracketed matter and emphasis added), is illustrative
of the claimed subject matter:
1. A method for adapting a workflow of a content management
system, the method comprising:
receiving, at the content management system, at least one
created information item created depending on a number of
allowed actions established for a particular user who created the
at least one information item, in which the at least one
information item comprises content to be published, a first
information item status level indicative of a present status level
of the content within the workflow, and a second information
item status level indicative of a number of characteristics of the
content within the information item;
executing the workflow via a workflow engine which
comprises stages each corresponding to a respective information
item status level, such that a next stage of the workflow is
determined based on a combination of:
different types of user status information, indicative
of a status of the particular user;
the first information item status level; and
the second information item status level; and
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[A] determining which of a plurality of users of the content
management system have signed into a groupware application
executing on an enterprise portal community associated with the
content management system and are currently active on the
groupware application so as to be available to currently approve
the at least one information item;
in which a user is chosen among the plurality of users to
manage the next stage in the workflow based on the second
information item status level; and
in which the user status information comprises a user role
status that defines what actions in the workflow each of the
plurality of users is allowed to engage in and that further defines,
based on the status of each of the plurality of users, those stages
in the workflow that may be omitted from the workflow.
Claim 1 of the instant application, reprinted above, is substantially similar in
scope with a prior version of claim 1, which was affirmed on appeal in
Appeal No. 2014-002782, mailed March 21, 2016. The principal difference
between the current version of claim 1 on appeal and the prior version of
claim 1 which was affirmed as being anticipated by Edd (US 2002/0184255
Al; published Dec. 5, 2002), is the addition of limitation [A], for which the
Examiner currently relies on Peirson, Jr. (US 2009/0025087 Al; published
Jan. 22, 2009), as teaching or suggesting.
The Examiner's Rejections
(1) Claims 1--4, 6, 7, 9-17, and 19-23 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Ans. 3-24.
(2) Claims 1--4, 6, 7, 9-17, and 19-23 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the same base combination of Edd and
Peirson, Jr. 3 Final Act. 2-19.
3 With regard to the obviousness rejection of claims 4, 13, 17, and 23 over
the combination of Edd, Peirson, and Manista (US 2009/0319402 Al;
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Application 12/967,351
Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 14--22)
and the Reply Brief (4--14), in light of the Examiner's response to
Appellants' arguments in the Appeal Brief (Ans. 24--29), the following
issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1--4, 6, 7, 9-17, and
19-23 under 35 U.S.C. § 101, as being directed to a judicial exception (e.g.,
an abstract idea), without significantly more?
(2) Did the Examiner err in rejecting claims 1--4, 6, 7, 9-17, and
19-23 as being unpatentable over the base combination of Edd and Peirson,
Jr. because Peirson, Jr. fails to teach or suggest the method for adapting a
workflow of content, including disputed limitation [A], as recited in claim 1,
and as commensurately recited in claims 7, 14, 20, and 23?
ANALYSIS
Issue (1): Patent Eligibility Under 35 U.S.C. § 101
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially-created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
published Dec. 24, 2009), Appellants rely on the same arguments presented
for base claims 1, 7, 14, and 20, which are rejected over the base
combination of Edd and Peirson (App. Br. 21; Reply Br. 12).
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nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014) (quotation marks and citation omitted);
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70
(2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In
accordance with that framework, we first determine what concept the claim
is "directed to." See id. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk .... ").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 (citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (2019) (hereinafter, "Revised Guidance"). Under that guidance,
after determining that a claim falls within one of the statutory categories
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under § 101 (hereinafter, "US PTO Step 1 "), we determine whether the claim
recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain
methods of organizing human activities such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people) (hereinafter, "USPTO Step 2A, Prong
1"); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF p ATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th Ed., Rev. 08.2017, Jan. 2018))
(hereinafter, "USPTO Step 2A, Prong 2").
Revised Guidance, 84 Fed. Reg. at 51-52, 54--55. Only if a claim: (1)
recites a judicial exception, and (2) does not integrate that exception into a
practical application, do we then evaluate whether the claim provides an
inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at
217-18. For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (hereinafter, "USPTO Step 2B").
Revised Guidance, 84 Fed. Reg. at 56.
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USPTO Steps 1 and 2A, Prong 1
Independent claim 1 recites to "[a] method for adapting a workflow of
a content management system," which executes workflow on "a workflow
engine" and
determin[ es] which of a plurality of users of the content
management system have signed into a groupware application
executing on an enterprise portal community associated with
the content management system and are currently active on the
groupware application so as to be available to currently approve
the at least one information item
(limitation [A]). Remaining independent claims 7, 14, 20, and 23 recite
commensurate limitations drawn to a "content management system for
adapting a workflow" ( claim 7), a "computer program product for adapting a
workflow" ( claim 14 ), a "method of publishing content on a computer
network" ( claim 20), and a "content management system for dynamically
adapting a workflow" ( claim 23)," which, on their faces, fall within the four
categories of invention under 35 U.S.C. § 101.
The Examiner finds, however, that claims 1, 7, 14, 20, and 23 are
directed to a judicial exception, in particular, the abstract ideas (i)
receiving information, executing a workflow, determining a
next stage of workflow, determining which users are [ signed]
... into a groupware application and determining an assigned
work based on a user role and determining which signed in user
can approve the content to publish, based on the user role,
which user actions in the workflow process can be
bypass[ed]/omitted from the various workflow stages and
which users can preferentially approve the information item in a
way that can be performed mentally or is analogous to human
mental work
(Ans. 3); (ii) "receiving ... content to publish in a workflow process in
which each user is associated with different roles, determining which users
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in the groupware applications are signed into and have the authority to
approve the item and based on the user roles some of the workflow stages
can be bypassed" (Ans. 5); and/or (iii) "determining which users ha[ve] the
authority to assign a[] content item in a workflow process based on the user
role" (Ans. 6).
Appellants contend that claims 1, 7, 14, 20, and 23 each recite
limitations commensurate with limitation [A] in claim 1, which "amounts to
a 'distributed network architecture operating in an unconventional fashion
to' dynamically adapt 'a workflow of a content management system"'
(Reply Br. 13 (citing Spec. ,r 2)). We agree. Claims 1, 7, 14, 20, and 23 are
not directed an abstract idea. We are persuaded by Appellants that claims 1,
7, 14, 20, and 23 are not directed to an abstract idea.
Specifically, the method for adapting a workflow of a content
management system recited in claim 1 ( and method, systems, and computer
program products reciting similar limitations in claims 7, 14, 20, and 23)
does not fall into any of the subcategories of abstract ideas enumerated in the
Revised Guidance, namely:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human
activity-fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or
legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing personal
behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions); and
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( c) Mental processes----concepts performed in the human
mind[] (including an observation, evaluation, judgment,
opinion}
Revised Guidance, 84 Fed. Reg. at 52. In particular, the method of
adapting/establishing a workflow for a content management system of claim
1, including (i) receiving created information items based on a number of
allowed actions established for a user, (ii) executing stages of workflow, and
(iii) determining a specific group of users meeting certain criteria (see
limitation [A]), does not define any mathematical relationships, formulas,
equations, or calculations. These features of claim 1 also do not define one
of the enumerated subcategories of methods of organizing human activity.
Rather than organizing any economic, commercial, legal, or human-based
activity, the claimed method for adapting a workflow of a content
management system executes a workflow for information items in a more
efficient manner, namely, by dynamically processing workflow based on
which users of the system are signed into a groupware application and are
currently active and available to approve information items. Claims 7, 14,
20, and 23 recite similar features.
In addition, claims 1, 7, 14, 20, and 23 do not simply generate tasks
based on rules to be completed upon the occurrence of an event, as found by
the Examiner (see Ans. 5, 8, 11-12, 14--15, 18). In contrast, claims 1, 7, 14,
20, and 23 execute a workflow in stages based on dynamically determining
which users of the system are signed into a groupware application executing
on an enterprise portal community and are currently active and available to
approve an information item. In other words, the method for adapting a
workflow recited in claim 1 (and as commensurately recited in claims 7, 14,
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20, and 23) is not purely a mental process, but requires at least one processor
and a computer engine connected to a groupware application executing on
an enterprise portal community to make the recited determinations and/or
perform the recited functions. Because claims 1, 7, 14, 20, and 23 do not
recite subject matter falling into one of the recognized categories of abstract
ideas ( e.g., mathematical concepts, certain methods of organizing human
activity, and mental processes), we are persuaded that the Examiner erred in
finding claims 1, 7, 14, 20, and 23 are directed to an abstract idea.
USPTO Steps 2A, Prong 2 and 2B
As we determine claims 1, 7, 14, 20, and 23 are not directed to a
judicial exception, we need not consider whether (i) these claims integrate
the alleged judicial exception into a practical application under USPTO Step
2A, Prong 2, or (ii) there is an inventive concept under USPTO Step 2B.
We are, therefore, persuaded the Examiner erred in rejecting independent
claim 1, independent claims 7, 14, 20, and 23, which recite commensurate
limitations, and dependent 2--4, 6, 9-13, 15-17, 19, 21, and 22, as being
patent-ineligible for the same reasons.
Issue (2): Obviousness Rejections Under§ 103(a)
The Examiner rejected claims 1--4, 6, 7, 9-17, and 19-23 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of Edd
and Peirson, Jr. Final Act. 2-19. In the Final Office Action (Final Act. 5---6,
9-10, 13, 15, 18), the Examiner relies on paragraphs 37, 61, and 62 of
Peirson, Jr. as teaching or suggesting limitation [A] recited in claim 1, and
the commensurate limitations recited in claims 7, 14, 20, and 23 (Final Act.
5-10, 20-21; Ans. 16-20). In response to Appellants' arguments (App. Br.
18-21) that Peirson, Jr. fails to teach or suggest limitation [A] of claim 1,
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and the similar limitations of claims 7, 14, 20, and 23, the Examiner (see
generally Ans. 24--29) cites to additional portions of Peirson, Jr., such as
Figures 3, 4, and 11, and paragraphs 34, 40, and 43.
Specifically, for example, the Examiner cites Figures 3 and 4 and
paragraphs 37, 40, 43, and 54 as teaching or suggesting limitation [A]
recited in claim 1 (see Ans. 24). However, Peirson, Jr. is silent as to
teaching, and the Examiner has not made explicit findings or adequate
rationale regarding, the feature of limitation [A] of "determining which of a
plurality of users of the content management system have signed into a
groupware application executing on an enterprise portal community
associated with the content management system and are currently active on
the groupware application" ( claim 1) ( emphasis added).
Although Peirson, Jr.' s Figures 3 and 4 show a process and interface
for obtaining and managing real estate transaction documents (see Peirson,
Jr. ,r,r 10, 11), and paragraphs 35, 37, 40, 43, and 54 describe recognizing if a
user is a buyer or seller, and allowing a user to approve and sign real estate
documents, none of the portions of Peirson, Jr. relied upon by the Examiner
determine which of plural users have signed into a "groupware application
executing on an enterprise portal community," as well as which users "are
currently active on the groupware application" and are "available to
currently approve" an information item. Instead, Peirson, Jr. simply
describes a buyer or seller signing into an application and signing
documents, regardless of whether or not they are "signed into a groupware
application executing on an enterprise portal community associated with the
content management system and are currently active on the groupware
application" ( claim 1 ).
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Appellants have shown the Examiner erred in rejecting claims 1--4, 6,
7, 9-17, and 19-23 as being unpatentable over the base combination of Edd
and Peirson, Jr., because Peirson, Jr. fails to teach or suggest a method for
adapting a workflow of a content management system including the
determination recited in limitation [A], as well as the commensurate
limitations recited in claims 7, 14, 20, and 23.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting as obvious independent claim 1, and independent claims 7,
14, 20, and 23 and dependent claims 2--4, 6, 9-13, 15-17, 19, 21, and 22,
which recite commensurate limitations.
CONCLUSIONS
( 1) We reverse the Examiner's rejection of claims 1--4, 6, 7, 9-1 7, and
19-23 under 35 U.S.C. § 101, as being directed to a judicial exception (e.g.,
an abstract idea), without significantly more.
(2) We reverse the Examiner's rejections of claims 1--4, 6, 7, 9-17,
and 19-23 under 35 U.S.C. § 103(a) over the base combination of Edd and
Peirson, Jr.
DECISION
We reverse the Examiner's decision to reject claims 1--4, 6, 7, 9-17,
and 19-23.
REVERSED
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