Ex Parte Harvey et al

Patent Trial and Appeal Board

Sep 25, 2018

10648143 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/648,143 08/25/2003
106095 7590 09/27/2018
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
Richard Harvey
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.
063170.6610 3235
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD HARVEY and TIMOTHY BENTLEY
Appeal2017-000136
Application 10/648, 143
Technology Center 3600
Before BRADLEY W. BAUMEISTER, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 7-12 and 14--26, which are all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify CA, Inc. as the real party in interest. Br. 4.
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Application 10/648,143
Introduction
Appellants describe their disclosure and claims as generally relating to
services using the Universal Description, Discovery and Integration (UDDI)
standard, and in particular as "giving practical effect to such services."
Spec. 1:9--11.
Independent claim 7 is illustrative of the claims on appeal, shown here
with disputed limitations in italics:
7. A method for use in a Web Services system
compnsmg:
providing a data repository storing a hierarchy of objects;
storing a first Business Entity object in the data
repository, the first Business Entity object identifying a first
business entity;
storing at least one first Business Service object in the
data repository under the first Business Entity object, the first
Business Service object identifying a business service that is
provided by the first business entity;
storing a second Business Entity object in the data
repository, the second Business Entity object identifying a
second business entity;
storing a Business Service Projection object in the data
repository under the second Business Entity object, the
Business Service Projection object identifying that the second
business entity offers an interface to the business service
provided by the first business entity, the second business entity
offering a business service that is similar to the business service
provided by the first business entity, and the second business
entity being prevented from modifying the first Business
Service object;
using the interface offered by the second business entity
to present, to a customer of the second business entity, the
business service provided by the first business entity as being
provided by the second business entity;
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using one or more processing systems to receive a
modification to the first Business Service object; and
using the one or more processing systems to
automatically modify both the first Business Service object
stored in the data repository and the Business Service
Projection object stored in the data repository in response to
receiving the modification to the first Business Service object.
Br. 29--30 (Claims App'x).
Rejections & References
Claims 7-12 and 14--26 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., an abstract idea) without reciting
significantly more. Non-Final Act. 2--4
Claims 7-9, 14--16, 20-23, and 26 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Caviles (US 6,752,313 Bl; June 22,
2004) and Lao (US 2003/0220880 Al; Nov. 27, 2003). Non-Final Act. 4--7.
Claims 10, 17, and 24 stand rejected under§ I03(a) as unpatentable
over Caviles, Lao, and Katz (US 2002/0062259 Al; May 23, 2002). Non-
Final Act. 7-8.
Claims 11, 12, 18, 19, and 25 stand rejected under§ I03(a) as
unpatentable over Caviles, Lao, and Goldberg (US 6,571,232 B 1; May 27,
2003). Non-Final Act. 8-11.
ANALYSIS
The § 101 Re} ection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
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(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If we determine they are not, then the
inquiry ends. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If we determine they are, then we consider under step two
whether the claims contain an "inventive concept" sufficient to "'transform
the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct.
at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Court in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Noting that the two stages involve
"overlapping scrutiny of the content of the claims," the Federal Circuit has
described "the first-stage inquiry" as "looking at the 'focus' of the claims,
their 'character as a whole,"' and "the second-stage inquiry (where
reached)" as "looking more precisely at what the claim elements add-
specifically, whether, in the Supreme Court's terms, they identify an
'inventive concept' in the application of the ineligible matter to which (by
assumption at stage two) the claim is directed." Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Therefore, we look to
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
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Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellants argue the claims are not directed to an abstract idea
because they do not claim the type of "age-old activity the Supreme Court
was concerned about in Alice." Br. 16. Instead, Appellants contend the
claims recite a novel "method of allowing one business entity to offer a
business service of another business entity by utilizing a 'business service
projection"' "to improve consistency of a web service offering." Br. 16.
This argument is unpersuasive. Regardless whether the phrase "for
use in a Web Services system" in the preamble of claim 7 is a limitation, 2
limiting a claim "'to a particular technological environment' or adding
'insignificant postsolution activity"' does not circumvent the § 101
prohibition against patent claims directed to an abstract idea. Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (quoting Diamond v. Diehr, 450 U.S.
17 5, 191-92 (1981) ). We agree with the Examiner that claim 7 is directed to
"organiz[ing] information gathered regarding business entity objects in a
data repository" and that, accordingly, consistent with Alice, the recited steps
for storing a hierarchy of objects in a repository "are directed towards a
method of organizing human activities." Ans. 2-3. Appellants' claimed
steps for storing and modifying "Business Entity objects" are analogous to
claims found abstract in other cases. For example in buySAFE, Inc. v.
2 If a preamble is essential to understand the limitations in the claim body
then it properly is considered a limitation of the claim. See Catalina
Marketing Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002). However, a preamble generally is not accorded any patentable
weight where it merely recites the purpose of a process and the body of the
claim does not depend on the preamble for completeness but, instead, the
process steps are able to stand alone. See, e.g., In re Hirao, 535 F.2d 67, 70
(CCPA 1976).
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Google, Inc., the Federal Circuit found a method of creating a "transaction
performance guaranty" patent-ineligibly abstract. 765 F.3d 1350, 1351-52
(Fed. Cir. 2014). Here, similarly, the claims are directed to "business entity"
abstract ideas. See also Content Extraction & Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343, 1345 (Fed. Cir. 2014) (method of
scanning and digitizing documents directed to abstract idea of data
recognition and storage).
We agree with the Examiner that the focus of claims 7-12 and 14--26
is directed to "a series of steps of providing a data repository storing a
hierarchy of objects[,] which is a method of organizing human activities
and[,] thus[,] directed to an abstract idea." Non-Final Act. 2. Humans
routinely obtain, store, and modify paper files about business entities,
services, and projections, and can store and modify them in the arrangements
as recited in claim 7.
Claim 7 is akin to the claim at issue in CyberSource, in which the
Federal Circuit held a claim that recited limitations for obtaining and
processing transaction information over the Internet was ineligibly directed
to activities a human could perform. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370, 1373 (Fed. Cir. 2011). We also agree with the
Examiner that claim 7 is directed to an idea "similar to the basic concept of
using categories to organize store and transmit information while comparing
new and stored information, using rules to identify options, which has been
found by the courts to be an abstract idea." Non-Final Act. 3; see
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 954--
56 (Fed. Cir. 2014) (unpublished).
Accordingly, we proceed to the second step of the Alice analysis.
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Step Two: Whether the Claims Recite "Significantly More" than the
Patent Ineligible Concept.
In the second step of the Alice analysis, the Examiner determines that
"[t ]he use of a computer server is just a recitation of the computer
limitations[,] which amount[ s] to mere instructions to implement the abstract
idea on a computer." Non-Final Act. 3 (also determining that "[t]aking the
additional elements individually and in combination, the computer
components at each step of the management process perform purely generic
computer functions" and, therefore, "[t]he claim does not include additional
elements beyond the abstract idea").
Appellants argue the ordered combination of limitations recited in
claim 1 7 amounts to significantly more than the abstract idea. Br. 16-18
( distinguishing Alice because "the holistic combination of the steps recited
in [ c ]laim 7 produces a concerted result (e.g., providing one or more
benefits) that is more than a mere combination of such functions performed
separately-namely the added benefits of increased consistency, data
integrity, and security") (citing Alice, 134 S. Ct. at 2359).
Although we agree with Appellants that the combination of ideas
recited in claim 7 provides benefits, we disagree that this is a basis to
determine the claim recites significantly more. "Adding one abstract idea
... to another abstract idea ... does not render the claim non-abstract."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017);
see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016) (patent-ineligible claims were directed to a combination of
abstract ideas).
We agree with the Examiner that claim 7, beyond the abstract idea( s)
to which it is directed, recites only the routine use of well-known, generic
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computer technology. Ans. 3 ( determining the limitations, taken alone and
as a combination, "do not 'transform' an abstract idea into a patent eligible
subject matter because the ... claim elements as an ordered combination
add[] nothing significant beyond the sum of their parts taken separately and
consist of well-understood, routine and conventional activity already
engaged in by the computing community").
We find unpersuasive Appellants' argument that claim 7 has a
technological focus because it "solves the data repository-specific problem
of losing data integrity and consistency by ensuring that the business service
projection is automatically modified or deleted whenever the business
service itself is modified." Br. 18 ("Moreover, [ c ]laim 7 improves security
of the data repository by ensuring that only the first business entity has
access to such modification and disallowing the second business entity from
modifying services not within its control."). Claim 7 is unlike cases where
the Federal Circuit has determined claims to be patent eligible because they
were "directed to a specific improvement to the way computers operate,"
Enfzsh, 822 F.3d at 1336, or were "rooted in computer technology," DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
In Enfzsh, the claims at issue were determined to be "directed to a
specific improvement to the way computers operate, embodied in [a] self-
referential table." Enfzsh, 822 F.3d at 1336. Here, although Appellants
disclose the use of UDDI Registry and Web Services technology for
embodiments of the invention (see Spec. 1:9--5:14), that technology is
simply well-known prior art employed in furtherance of the business method
idea to which claim 7 is directed. In other words, unlike the claim at issue in
Enfzsh, Appellants' claim 7 is not directed to any new or improved software
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technology to carry out the recited steps-it is not directed to a software
feature that is "a specific improvement to the way computers operate."
Although implementation of Appellants' claim 7 is directed to functional
aspects implemented in software, unlike Enfzsh, it is not directed to
improving any software technology feature.
In DDR Holdings, the Federal Circuit determined the claims at issue
were not directed to an abstract idea because they were directed to "a
challenge particular to the Internet," and were "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." 773 F .3d at 1257. Here, however, the
storing and processing of business entity, service, and projection data is not
a challenge particular to computer networks. Rather, it is routine automation
of an abstract idea, using generic computer components. It is not the type of
claim that is "necessarily rooted in computer technology." See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015) ("[r]equiring the use of a ·software' 'brain' 'tasked with tailoring
information and providing it to the user' provides no additional limitation
beyond applying an abstract idea, restricted to the Internet, on a generic
computer"). Further, the recitation of "for use in a Web Services system" in
the preamble of the claim at most simply limits the use of the recited idea to
that particular field. "[M]erely limiting the field of use of the abstract idea
to a particular existing technological environment does not render the claims
any less abstract." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1259 (Fed. Cir. 2016).
Accordingly, Appellants do not persuade us of error in the § 101
rejection of claim 7 (or of claims 8-12 and 14--26, argued therewith).
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The§ 103 (a) Rejection
In rejecting claims 7, 14, and 21, the Examiner primarily relies on the
disclosure of Caviles, which teaches a method of using shell accounts to
quickly set up credit card merchant accounts for online merchants. See Non-
Final Act. 4---6; see also Caviles 1:12-20, 2:4--10, 4:33--47. In particular, the
Examiner maps the shell accounts of Caviles to the recited "Business Service
Projection object." See Non-Final Act. 5 (citing Caviles 4: 10--47, 6: 10-7:4);
see also Ans. 5. The Examiner then finds (a) Caviles' disclosure of an
application processing entity receiving a merchant's completed application
form for a new account teaches the first disputed limitation of "using one or
more processing systems to receive a modification to the first Business
Service object," and (b) the disclosure of populating a new merchant account
by a series of shell accounts teaches the second disputed limitation of
"modify[ing] the Business Service Projection object in response to receiving
the modification to the first Business Service object," as recited in claim 7,
and as commensurately recited in claims 14 and 21. Non-Final Act. 5 ( citing
Caviles 4:33-56).
Appellants argue the Examiner errs because "the cited portion of
Caviles merely discusses setting up the initial merchant account with the
identification numbers stored in the shell accounts when the merchant first
requests an account be made." Br. 20 (citing Caviles 4:33-56). Appellants
contend that, because "Caviles teaches the system being initially set up with
the shell accounts," it "does not teach receiving any modification to the
Business Service Projection object or automatically modifying the object in
response to that modification, as recited." Br. 20-21. Appellants' argument
. .
1s persuasive.
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As Appellants' Specification explains, "Business Service Projections"
allow one business to point to a service of another business, which makes it
appear that the first business offers a service in fact provided by a second
business. As discussed above, claim 7 is directed to an idea that uses such
business service projections. The claim recites a "first Business Service
object" associated with a first business entity, for which there is a
corresponding "Business Service Projection object" associated with a second
business entity. The disputed limitations require that when there is a request
to modify the first Business Service object, both that object and the
corresponding Business Service Projection object are automatically
modified.
As Appellants explain, and we agree, the shell account of Caviles,
which the Examiner maps to the Business Service Projection object, is used
only as a source of initial information for setting up another account. See
Br. 20; Caviles 4:33-56. Because Caviles does not disclose modifying the
shell accounts, and the Examiner does not explain why there would have
been a suggestion to do so, we agree that Caviles does not teach or suggest
automatically modifying both the shell account and a related Business
Service object in response to a request to modify the related Business
Service object. Accordingly, Appellants persuade us the Examiner errs in
finding Caviles teaches or suggests the disputed limitations of claims 7, 14,
and 21.
We, therefore, do not sustain the 35 U.S.C. § 103(a) rejection of claim
7, 14 and 21. We, likewise, do not sustain the§ 103(a) rejections of their
dependent claims 8-10, 12, 15-20, and 22-26.
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Similar to claims 7, 14, and 21, claim 11 recites a requirement "to
automatically modify both the first Business Service object stored in data
repository and the Business Service Projection object stored in the data
repository in response to receiving the modification to the first Business
Service object." Br. 31 (Claims App'x). Appellants separately argue the
Examiner errs in the rejection of claim 11, contending Caviles' disclosure of
"populating a new account with sh[ e ]11 accounts and updating elements of a
credit card processing system do[ es] not teach modifying two preexisting
objects stored in the data repository, as recited." Br. 23.
For the same reason discussed supra for claims 7, 14, and 21,
Appellants' argument is persuasive. Thus, we also do not sustain the
§ 103(a) rejection of claim 11.
DECISION
For the above reasons, we-
sustain the 35 U.S.C. § 101 rejection of claims 7-12 and 14--26; but
do not sustain the§ 103(a) rejections of claims 7-12 and 14--26.
Because we sustain the rejection of each claim under § 101, we
designate our decision as an affirmance
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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