Ex Parte Hamilton et al

Patent Trial and Appeal Board

Jun 23, 2017

12537830 (P.T.A.B. Jun. 23, 2017)

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.
10022/1557 6180
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
12/537,830 08/07/2009
28164 7590
BGL/Accenture - Chicago
BRINKS GILSON & LIONE
P O BOX 10395
CHICAGO, IL 60610
06/26/2017
Mary Elizabeth Hamilton
06/26/2017 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 MARY ELIZABETH HAMILTON, MICHAEL A. HOLZMAN,
LOIUS CHARLES NEBOLSKY, and ATUL K. KAPUR
Appeal 2015-002696
Application 12/537,830
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—24, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-002696
Application 12/537,830
THE INVENTION
The Appellants’ claimed invention is directed to electronic
collaboration tools and applications (Spec., para. 1). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. An electronic collaboration enablement system, comprising:
a processor;
a memory coupled to the processor, the memory comprising:
multiple project templates, where each project template
corresponds to a different project type and comprises:
an identification of phases associated with the corresponding
project type;
an identification of a set of activities associated with each
phase; and
an identification of project management electronic collaboration
tools associated with the corresponding project type and with each
phase of the corresponding project type and with each activity of the
corresponding phase; and
instructions that, when executed, cause the processor to:
receive a first project type identifying a project to be performed;
receive provisioning data associated with the first project type;
identify a first project template from among the multiple project
templates that corresponds to the first project type;
identify, from the first project template, a set of phases
corresponding to the first project type, the set of phases comprising a
first phase and subsequent phases, wherein the set of activities
associated with the first phase comprises a first activity and
subsequent activities;
integrate collaboration tools identified in the first project
template as corresponding to the first phase of the first project type
and a first activity of the first phase into a single electronic
collaboration user interface;
customize the electronic collaboration user interface to the first
activity and the first phase of the project to be performed;
identify when the project has moved to one of the subsequent
activities of the first phase or to one of the subsequent phases of the
first project type;
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Application 12/537,830
dynamically identify and integrate the project management
electronic collaboration tools corresponding to each subsequent
activity of the first phase and to each subsequent phase into the
electronic collaboration user interface when the project moves to the
subsequent activities or subsequent phases, respectively; and
dynamically customize, as the project moves to one of the
subsequent activities of the first phase or one of the subsequent phases
of the first project type, the electronic collaboration user interface to
each subsequent activity of the first phase and to each subsequent
phase of the first project type, respectively.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—24 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1—6, 9—14, and 17—22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Frisco et al. (US 2003/0061330 Al; Mar. 27,
2003), Wolff (US 2004/0143477 Al; July 22, 2004), and Wodtke et al. (US
2005/0027585 Al; Feb. 3, 2005).
3. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Frisco, Wolff, Wodtke, and Franklin (US 2005/0095569
Al; May 5, 2005).
4. Claims 5, 6, 13, 14, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Frisco, Wolff, Wodtke, and Beaven et al. (US
2004/0186762 Al; Sept. 23, 2004).
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Application 12/537,830
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper because the claim is not directed to an abstract idea, and
that even if the claim is directed to an abstract idea that the claim defines
“significantly more” to overcome the rejection (Reply Br. 2—12).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 2-9).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/537,830
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id at 2358.
Here, we find that the claim is directed to the concept of managing
project templates for a project team. This is a fundamental economic
practice long prevalent in our system of commerce and is a method of
organizing human activities, and is an abstract idea beyond the scope of
§101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. Here, the claim is
not rooted in technology but rather the concept of managing project
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templates for a project team, which is an abstract idea for the reasons given
above.
We note the point about pre-emption. Reply Br. 6. Although pre­
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)(“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
For these reasons the rejection of claim 1 is sustained. The Appellants
have presented the same arguments for the remaining claims and the
rejection of these claims is sustained as well.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation to:
dynamically identify and integrate the project management electronic
collaboration tools corresponding to each subsequent activity of the
first phase and to each subsequent phase into the electronic
collaboration user interface when the project moves to the
subsequent activities or subsequent phases, respectively
(Claim 1).
In contrast, the Examiner has determined that the rejection is proper
and that the cited claim limitation is found in Frisco at Figures 8, Fig. 14A,
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and Fig. 14B (Ans. 10—3). The Examiner also makes citations to Frisco at
Figures 9, 12A, 13, 14A-C, 15A-C, 16A-C, 20, 20A, 22, 23, 25, 26, and
paras. 36, 37, 62, 63, 241, 242, and 255—257 (Ans. 13—15).
We agree with the Appellants. Here, the cited claim limitation is not
shown by Frisco at Fig. 8, Fig. 14A, and Fig. 14B. These cited portions fail
to specifically disclose the argued claim limitation. For example in Fig. 8,
the figures do show dynamic field (tools) for an activity. However it is not
specifically disclosed that these tools are “integrat[ed].. ..into the user
interface” when the project moves to the “subsequent activities or
subsequent phases respectively” as claimed. The other above cited portions
of Frisco fail to disclose this claim limitation as well. For these reasons, the
rejection of claim 1 and its dependent claims is not sustained. The
remaining claims contain a similar limitation to one listed above, and the
rejection of these claims is not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35U.S.C. § 101 as listed in the Rejections
section above.
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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DECISION
The Examiner’s rejection of claims 1—24 is sustained.
AFFIRMED
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