Ex Parte Grandcolas et al

Patent Trial and Appeal Board

Jan 31, 2018

11242565 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
CITI-0296 7007
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
11/242,565 10/03/2005
13708 7590 01/31/2018
Johnson, Marcou & Isaacs, LLC
27 City Square, Suite 1
Hoschton, GA 30548
Michael Grandcolas
01/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL GRANDCOLAS, JOHN RIBLETT, TED KRAWIEC,
ALBERT COHEN, SAM SHAHDOUSTI, NARESH VYAS, MIKE MAST,
SIMON KHILKEVICH, GENE STOLAROV,
IRINA KORYAKOVTSEVA, GRIGOR MARKARIAN,
JEREMY DIMOND, AVINASH KHARUL, AMIT CHITNIS,
RAVIN VERNEKAR, DILIP PAREKH, MARK BITTER,
FARAH KHALILI, TERESA PETACH, CHRIS KOWALSKI, and
RAJASHREE KARWA
Appeal 2016-007764
Application 11/242,565
Technology Center 3600
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 5 40 and 42—55. Claims 1—4 and 41
1 Appellants identify Citicorp Credit Services, Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2016-007764
Application 11/242,565
have been canceled. Appeal Br. 18, 23. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.
REPRESENTATIVE CLAIM
Claims 54 and 55 are independent claims. Claim 54, reproduced
below, is representative of the claimed subject matter:
54. A method for implementing on-line financial
institution services via a single physical and logical financial
institution platform, comprising:
receiving, at a single computer application server running
a plurality of different on-line banking applications selectable by
a plurality of different financial institution businesses, a selection
by at least two of the financial institution businesses at different
geographic locations, independently of one another, of different
versions of a same one of the plurality of on-line banking
applications;
creating, by the single computer application server, a
separate web app with separate web app context running in a
same servlet container for each of the different versions of the
selected same one of the plurality of on-line banking
applications;
providing, on the single computer application server, for
each of the different versions of the selected same one of the
plurality of on-line banking applications, the separate web app
with separate web app context running in the same servlet
container;
retrieving, by the single computer application server,
content for the selected same one of the plurality of on-line
banking applications from a database via a business hierarchy
database structure;
caching, in computer memory, at least part of the retrieved
content for the selected same one of the plurality of on-line
banking applications in memory; and
2
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Application 11/242,565
updating the cached content for the selected same one of
the plurality of online banking applications while the selected
same one of the plurality of on-line banking applications is
running.
THE REJECTIONS
1. Claims 5 40 and 42—55 stand rejected under 35 U.S.C. § 101 as
being directed to judicially excepted subject matter. Final Act. 2—3.
2. Claims 5—38 and 42—51, 54, and 552 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Bowman-Amuah (US 6,427,132
Bl; issued July 30, 2002), Moss et al. (US 5,485,370; issued Jan. 16, 1996)
(“Moss”), and Quatrano et al. (US 6,748,420 Bl; issued June 8, 2004)
(“Quatrano”). Final Act. 6—23.
3. Claims 39, 40, 52, and 53 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Bowman-Amuah, Moss, Quatrano,
and Sweet et al. (US 7,565,643 Bl; issued July 21, 2009) (“Sweet”).
Final Act. 23—24.
ANALYSIS
Rejection under 35 U.S.C. 101
In rejecting claims 5 40 and 42—55 under 35 U.S.C. § 101, the
Examiner finds the claims are directed to the abstract idea of providing
different versions of a computer program to different users—i.e., a method
2 The Final Office Action mistakenly lists claims 39, 40, 52, and 53 as
rejected under § 103(a) over Bowman-Amuah, Moss, and Quatrano, despite
addressing these claims substantively in the § 103(a) rejection over
Bowman-Amuah, Moss, Quatrano, and Sweet. See Final Act. 5, 23—24. We
treat this as a harmless, ministerial error.
3
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Application 11/242,565
of organizing human activities. Final Act. 2. The Examiner further finds
that the additional claim elements, when viewed individually and as a whole,
“amount to no more than (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 3.
Appellants argue the Examiner’s rejection of clams 5 40 and 42—55
under 35 U.S.C. § 101 is improper because “the rejection lacks specific
evidence and analysis to establish a basis for alleging that the claims are
directed to an abstract idea, and ... do not amount to significantly more than
an abstract idea.” Appeal Br. 10. Appellants assert the Examiner’s analysis
“mischaracterizes the claims” and recites “stock boilerplate conclusions.”.
Appeal Br. 11—12. Further, Appellants submit the Examiner’s analysis does
not explain “how the present claims carry a risk of pre-empting or tying up
. . . the . . . alleged ‘abstract idea.’” Appeal. Br. 12 (emphasis omitted).
In response, the Examiner’s Answer addresses Appellants’ arguments
by clarifying and explaining the § 101 rejection. Ans. 2—7. More
specifically, the Examiner clarifies that representative claim 54 recites the
following six steps:
i. receiving ... a selection by . . . businesses at different
geographic locations ... of different versions of a same . . .
application(s). . .
ii. creating a web app ... for each version(s)... of the
application(s). . .
iii. providing for each version(s)... the web app . . .
iv. retrieving content... for the . . . application(s). . .
from a database . . .
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Application 11/242,565
v. caching . . . part of the retrieved content... in
memory[, and]
vi. updating the . . . content... for the .. . application(s).
Ans. 3^4. The Examiner explains that the “receiving,” “retrieving,” and
“updating” steps are conventional and similar to the court-identified abstract
ideas of allowing players to purchase additional objects during a game—i.e.,
a method of organizing human activities—and obtaining and comparing
intangible data— i.e., an idea of itself. Ans. 4 (citing CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed. Cir. 2011); GametekLLC
v. Zynga, Inc., No. CV-13-2546 RS, 2014 WF 1665090, at *A-7 (N.D. Cal.
2014), aff’d, 597 F. App’x 644 (Fed. Cir. 2015)); see also Ans. 5—7. The
Examiner further explains that the “creating” and “providing” steps merely
“refer to a programmer implementing code in known, conventional ways”
and “the ‘caching’ step is a conventional technique to hold data ... in active
memory (such as RAM).” Ans. 4, 5—7.
Next, the Examiner explains that the additional elements of claim
54—“an on-line . . . platform; a server; applications; web apps; servlet
containers; a database; a business hierarchy database structure; caching; and
memory”—are either descriptive or generic computer hardware or software
known in the industry, as evidenced by Appellants’ Specification. Ans. 4—5
(citing Spec. 7:23-26, 8:17-22, 21:22-23, 23:17-18, 90:17-18).
Accordingly, the Examiner explains that the additional elements of claim 54,
when considered individually and in combination, do not add significantly
more to the abstract concept. Ans. 6—7. The Examiner also explains that
dependent claims do not add significantly more to the abstract concept
recited in the independent claims. Ans. 7. Further, the Examiner explains
“that pre-emption or lack thereof is not the standard that is applied to
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Application 11/242,565
determine patent-eligibility ...[;] rather[,] it is the two-step Alice/Mayo
analysis.” Ans. 7.
Appellants did not reply to the Examiner’s Answer, and Appellants’
arguments do not substantively and persuasively rebut the Final Office
Action’s § 101 rejection, as explained and clarified by the Examiner’s
Answer. Having considered the Examiner’s rejection in light of each of
Appellants’ arguments and the evidence of record, we disagree with
Appellants that the Examiner erred in concluding claims 5 40 and 42—55 are
directed to judicially excepted subject matter under 35 U.S.C. § 101.
Rejection under 35 U.S.C. 103
In rejecting claim 54, among other findings, the Examiner finds
Bowman-Amuah teaches a next generation network (“NGN”) simulator for
use in e-commerce. Final Act. 6—7 (citing Bowman-Amuah 2:3—10, 7:20—
30, 9:10-15, 14:8-18, 59-65, 21:54—22:17, 64:23^10, 86:34—41, 92:49-52,
105:1—67, 106:36—38, 110:34—56). The Examiner finds Moss teaches a
secure financial-services system that enables a user to make financial
transactions and manage accounts and that updates a plurality of related
application programs with updated versions. Final Act. 7 (citing Moss 3:41—
48, 12:62-65, 14:55-60, 18:54—60, 20:2-12, 50-55, 25:55-67, 29:10-13).
Further, the Examiner finds Moss’s system and applications can be
simulated or used in a live fashion by a plurality of financial institutions and
users with different versions based on country and language spoken.
Final Act. 7—8 (citing Moss, Abstract, 4:10-5:60, 26:48—51, 27:1—3, 28:9-
18,29:10-13, 18:33-19:15, 29:37-30:35, Figs. 16-17). The Examiner
concludes:
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Application 11/242,565
It would have been obvious ... to combine the teachings of
Bowman-Amuah and Moss inasmuch as known work in one field
of endeavor may prompt variations of it for use in either the same
field or a different one based on design incentives or other market
forces if the variations would have been predictable to one of
ordinary skill in the art. . . . Bowman-Amuah is intended to
facilitate integration of newer technologies with previously
existing systems, particularly in e-commerce related
applications. . . . Bowman-Amuah notes the market forces
driving such upgrading and integration .... An older system
such as that taught by Moss would clearly be ready for the
improvements offered by Bowman-Amuah and could
incorporate the simulation capabilities of Bowman-Amuah into
its own simulation systems.
Final Act. 8 (citing Bowman-Amuah 13:34—15:13, 20:8—39; Moss, 26:48—
51,27:1-3,28:9-18).
The Examiner finds Quatrano teaches a method for generation of web
applications (i.e., a web app) via servlets such that a web server’s servlet
container runs the servlets. Final Act. 9 (citing Quatrano 14:56—60; 30:22—
35). The Examiner also concludes “it would have been obvious ... to
modify Bowman-Amuah with . . . Quatrano to enable multiple users to share
use of an application .... This would have been an example of applying a
known technique (Quatrano) to a known method ready for improvement,”
such that “a user of Bowman-Amuah could select any on-line banking
application and have it converted into a web application by the method of
Quatrano.” Final Act. 9 (citing Quatrano, Abstract).
Appellants’ arguments center on the assertion that Bowman-Amuah,
Moss, and Quatrano do not teach or suggest “receiving . . . selection by at
least two . . . financial institution businesses ... of different versions of a
same . . . on-line banking application^” and “creating ... a separate web app
with separate web app context,” as recited in independent claim 54 (and
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recited commensurately in independent claim 55). Appeal Br. 13—16. As
discussed in further detail below, Appellants’ arguments do not persuasively
rebut the Examiner’s findings, reasoning, and conclusions with respect to the
combined teachings and suggestions of Bowman—Amuah, Moss, and
Quatrano.
As an initial matter, Appellants assert that using the claimed “web-app
contexts provides a ‘firewall’ for class scope that enables the separate web
apps with separate web app context to run in the same servlet container and
to share a session context.” Appeal Br. 13. This argument is unpersuasive.
As discussed in more detail below, the Examiner finds Quatrano teaches
using servlets within a web server for applications such as Internet access to
bank services, which ordinarily skilled artisans would have understood
teaches or suggests providing separate web app contexts for separate web
apps on the server. Final Act. 9; see Quatrano 2:9-21; 30:31—35. To the
extent Appellants’ assertion that the claims require a “firewall” is
commensurate with the scope of claim 54, we agree with the Examiner that
Quatrano’s disclosure of using servlets for secure banking functions teaches
or suggests this requirement.
With respect to Bowman-Amuah, Appellants argue the cited
disclosures “suggest, at most, the use of the simulated platform for
communications and data exchange between the customer and her financial
institution and not between a single financial institution platform and two or
more financial institution businesses, as claimed.” Appeal Br. 14. We
disagree. Bowman-Amuah teaches or suggests the disputed feature because
Bowman’s NGN simulator platform is used for communications and data
exchange with a plurality of companies. Bowman-Amuah 86:34-41; 98:20-
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27. Bowman suggests that these companies can be financial institution
businesses with its disclosure that components of a NGN can enable
electronic internet commerce activities such as banking. Bowman-Amuah
20:20-33, 106:37—39. Moss also teaches or suggests the disputed feature
with its disclosure of a network host computer communicating and
exchanging data with two or more banks. See, e.g., Moss, 18:49—19:5; Fig.
10, items 60, 60a, 60b.
Appellants further argue Bowman-Amuah and Moss have nothing to
do with a separate web application with separate web application contexts
running in the same servlet container. Appeal Br. 14. As discussed above,
however, the Examiner finds Quatrano teaches generating web applications
via servlets. The Examiner relies on the teachings of Quatrano in
conjunction with the teachings of Bowman-Amuah, not just
Bowman-Amuah or Moss, for these claim elements. See Final Act. 9—10.
Accordingly, Appellants’ argument is not responsive to the Examiner’s
rejection, which relies on the combined teachings of Bowman-Amuah,
Moss, and Quatrano.
Appellants also argue the Examiner errs in finding Quatrano teaches
or suggests “a separate web app with separate web app context running in
the same servlet container.” Appeal Br. 14—15. Appellants assert “Quatrano
does not describe ‘the part of a web server dedicated to running a servlet is a
servlet container,”’ but instead “merely describes a web server or ‘in
process’ server that incorporates or embeds the applications being served . . .
similar to web servers that embed servlets, Internet or Netscape Server API
DLLs, and stateless scripted apps.” Appeal Br. 15.
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We disagree with Appellants. As the Examiner explains, Quatrano
“teaches the use of servlets embedded in a web server, [which] allows a
single server platform to perform the functions of what would have required
separate application and web servers disclosed in other embodiments.”
Ans. 9—10 (citing Quatrano 30:22—35). From the cited disclosure of
Quatrano, one of ordinary skill in the art would have understood that in
order to implement the separate servlets successfully, the web server would
use a compatible Java servlet container for containing and implementing the
servlets. See Quatrano 30:22—35; KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (explaining that an obviousness analysis can take account of
the inferences and creative steps of a person of ordinary skill in the art);
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1360 (Fed. Cir. 2006) (stating that “the prior art” includes basic
principles unlikely to be restated in cited references). Accordingly, a
pertinent dictionary definition of the term “Servlet” indicates that one of
ordinary skill in the art would have understood servlet architecture and
implementation as follows:
[A Servlet is a] Java program which exists on the server-side
and publishes services which may be dynamic Web content to
clients, and coexists with an HTTP server. Servlets are
compiled, support-threading, and may be added to Web sites
using programs like JRun or a Java module for the Apache
server. An ecommerce site may use a servlet which is perhaps
based on the HttpServlet abstract class which provides support
for handling requests from the client-side, and to respond to
them accordingly.
Servlet, Dictionary of Multimedia and Internet Applications: A Guide for
Developers and Users (1st ed. 1999) (accessed Jan. 23, 2018), https://
search, credoreference. com/content/entry/wdmia/servlet/0?institutionld=743.
10
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Application 11/242,565
Moreover, contrary to Appellants’ assertions that the disputed claim
language is novel or non-obvious, Appellants’ Specification describes the
servlet/servlet container architecture and implementation as requiring
nothing more than conventional off-the-shelf computer components that are
well-known in the art:
The minimum runtime environment required for the JFP
platform is a J2EE compliant servlet container or engine, such as
BEA’s Weblogic Express or IBM’s Websphere servlet engines.
These J2EE compliant servlet engines, in turn, reside within a
standard Java JVM, available from multiple sources. JVMs
available for the major operating system platforms include, for
example, Unix, Linux, Solaris, NT, Windows 2000 and IBM[],
Spec. 23:13—20; see also Spec. 21:5—7, 22—23 (disclosing that its Java
Financial Platform (“JFP”) applications are built to run on and adhere to the
facilities and constraints of standard J2EE compliant servlet containers).
Additionally, Appellants argue:
the Examiner has not shown how [the stated reasoning for
combining Bowman-Amuah, Moss, and Quatrano] follows and
. . . that one of ordinary skill would have considered developing
such as [sic] system to begin with. [The Examiner’s reasoning]
is not a rational underpinning that shows a connection by
articulated reasoning of what those of ordinary skill knew,
leading to the claim limitation at issue.
Appeal Br. 15—16.
This argument is unpersuasive because it does not substantively
address a deficiency in the Examiner’s proposed rationale to combine
Bowman-Amuah, Moss, and Quatrano. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (appellants must advance substantive
arguments beyond mere recitation of the claim elements and naked
assertions that the corresponding elements were not found in the prior
11
Appeal 2016-007764
Application 11/242,565
art). The Examiner provides a specific rationale to combine, drawn
from teachings of the cited prior art and Supreme Court precedent,
which Appellants do not persuasively rebut. See Final Act. 8—9. As is
the case here, if “a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either
in the same field or a different one,” and “if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond
his or her skill.” KSR, 550 at 417. Appellants do not point to any
evidence of record that the combinations would be “uniquely
challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters.
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing
KSR, 550 U.S. at 418-19).
In sum, Appellants’ arguments are unpersuasive because the
arguments improperly attack the cited references individually without
substantively addressing what a person of ordinary skill would have
understood from the references’ teachings in combination. See In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.”).
For the reasons stated above, having considered the Examiner’s
§ 103(a) rejection of claims 54 and 55 in light of each of Appellants’
arguments and the evidence of record, we disagree with Appellants and
sustain the Examiner’s § 103(a) rejection of claims 54 and 55, as well as the
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Application 11/242,565
§ 103(a) rejections of claims 5 40 and 42—53, which are not argued
separately with particularity beyond the arguments advanced for claims 54
and 55. See Appeal Br. 10-16. We adopt as our own the Examiner’s
findings, conclusions, and reasoning in the § 103(a) rejections of claims 5—
40 and 42—55 and the Examiner’s Answer to the extent consistent with the
above.
DECISION
We affirm the Examiner’s decision rejecting claims 5 40 and 42—55
under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 5 40 and 42—55
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv)(2015).
AFFIRMED
13
1/30/2018 Title - Credo Reference
English ▼
Dictionary of Multimedia and Internet Applications: A Guide for Developers
and Users
Contains references and illustrations, explains new and emerging technologies, bridges the gap between definition
and explanation, and provides useful tradename information,
Authorfs): Francis Botto
Edition! 1st
Articles; 1,379
Images: 22
People: 10
(\1/1 Wiley Copyright © 1999 by John Wiley t§ Sons Ltd
Headlnqs
Articles
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Al!(1379)
1000
The number of bits transferred in one second, using the unit Kbps,...
The number of bits transferred in one second using a 1 Mbps data transfer rate....
1, A kilobyte has 1024 bytes. 2. A megabyte has 1024 kilobytes. 3. A gigabyte has 1024 megabytes. 4. A terabyte has 1024...
1024 * 7S1
A standard display resolution sometimes referred to as XGA {extended Graphics Array)....
An industry name for tbin-Bhernet or cheapernet LAN technology, it uses inexpensive coaxiai cable, and is popular for smaii
networks...,
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An industry name for basic Ethernet LAN technoiogy Network computers/devices are fitted with Ethernet cards (or chipsets) and are
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A data transfer rate measured in Mbits/s, and one that the original MPEG-1 video standard was designed for. it is the approximate
data...
The thickness of a DVD or CD disk variant {See CD-ROM and DVD-ROM .)...
1.4-4 Mhvt®
https://search.credoreference.com/content/title/wdmia?tab=entries 1/2
from Dictionary of Multimedia and Internet Applications: A Guide for Developers and
Users
View article on Credo
A Java program which exists on the server-side and publishes services which may be dynamic Web
content to clients, and coexists with an HTTP server. Servlets are compiled, support-threading, and may
be added to Web sites using programs like JRun or a Java module for the Apache server. An e-
commerce site may use a servlet which is perhaps based on the HttpServlet abstract class which
provides support for handling requests from the client-side, and to respond to them accordingly.
Servlets may be loaded either:
* when specified using a URL
• when the Web server starts.
The Web server calls the servlets’ in it method to begin, and the servlet calls service, doGet, or doPost
method requests to serve requests. When unloaded the servlet may invoke the destroy method to
release itself from committed resources and to save state changes to a persistent state, and these may
be retrieved using the in it method. When called, the init method is passed a ServletConfig object that
holds configuration information about the particular Web server Implementation including the initArgs
parameter which is held in the servlet properties file, and is obtained by calling the
config.getlnitParameter ("parameter") method. Servlets may also interact with, and make use of EJBs
(Enterprise JavaBeans). A HTTP servlet may handle requests and responses using its service method,
and accepts:
* the HTttpServletRequest object that holds the client’s sent headers and streams
• the HttpServletResponse object that holds the servlet’s output stream response.
Copyright © 1999 by John Wiley & Sons Ltd
https://search.credorefefence.eom/content/entrv/wdmia/servlet/Q
Servlet. (1999). In F. Botto, Dictionary of multimedia and internet applications: a guide for developers and
users. Hoboken, NJ: Wiley. Retrieved from
https://search.credoreference.com/content/entry/wdmia/serviet/0?institutionid:--743
"Servlet." In Dictionary of Multimedia and internet Applications: A Guide for Developers and Users, by
Francis Botto. Wiley, 1999. https://search.credoreference.eom/content/entry/wdmia/servlet/O?
institutionid^743
Serviet. (1999). In F. Botto, Dictionary of multimedia and internet applications: a guide for developers and
users. [Online]. Hoboken: Wiley. Available from:
https://search.credoreference.com/content/entry/wdmia/servlet/Q?institution!d-743 [Accessed 18 January
2018],
"Serviet." Dictionary of Multimedia and internet Applications: A Guide for Developers and Users, Francis
Botto, Wiley, 1st edition, 1999. Credo Reference,
https://search.credoreference.com/content/entry/wdrnia/servlet/Q7institutionld-743. Accessed 18 Jan
2018.
https://search.credorefefence.eom/content/entrv/wdmia/servlet/Q