Ex Parte Khusial et al

Patent Trial and Appeal Board

Jul 19, 2016

10910900 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/910,900 08/04/2004
46320 7590 07/21/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Darshanand Khusial
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.
CA920040023US 1 9369
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/21/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARSHANAND KHUSIAL, ROSS MCKEGNEY,
LEV MIRLAS, and WESLEY M. PHILIP
Appeal2014-002631 1
Application 10/910,9002
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 52, 54, 57-60, 62, 64, 67-70, 72, 74, and 77-80. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 14, 2013) and Reply Brief ("Reply Br.," filed January 6, 2014),
and the Examiner's Answer ("Ans.," mailed November 6, 2013) and Final
Office Action ("Final Act.," mailed September 24, 2012).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2014-002631
Application 10/910,900
CLAIMED INVENTION
Appellants' claimed invention "relates to e-commerce systems
deployment and more particularly to buyer organization administration in e-
commerce computing systems" (Spec. i-f 1 ).
Claim 52, reproduced below, is illustrative of the subject matter on
appeal:
52. A method for administrating buyer organizations
and partner organizations interacting in a host computing
hardware system, comprising:
establishing, by the host computing hardware system, a
relationship between an instance of a partner organization and
instances of a group of buyer organizations;
persisting the established relationship between the
instance of the partner organization and the instances of the
group of buyer organizations within a data storage device of the
host computing hardware system; and
granting an administrative user of the partner organization
administrative access to perform actions on the group of buyer
organizations without requiring a separate granting of access for
each buyer organization in the group.
REJECTIONS
Claims 52, 54, and 57---60 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 52, 54, 59, 60, 62, 64, 69, 70, 72, 74, 79, and 80 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Shavit (US 4,799,156, iss.
Jan. 17, 1989) and C. Wood and E. B. Fernandez, Decentralized
2
Appeal2014-002631
Application 10/910,900
Authorization in a Database System, IBM Corp. IEEE 1979 (hereinafter
"Wood"). 3
Claims 57, 58, 67, 68, 77, and 78 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shavit, Wood, and Official Notice.
ANALYSIS
Non-Statutory Subject Matter
We are not persuaded that the Examiner erred in rejecting claims 52,
54, and 57---60 under 35 U.S.C. § 101 as directed to non-statutory subject
matter. Instead, we agree with the Examiner that the claimed method steps,
including each of the "establishing," "persisting," and "granting" steps
recited in independent claim 52, can reasonably be performed by a human,
e.g., by human thought alone or by a human using pen and paper, without
the use of a machine (Ans. 9-11 ). As such the claims are directed to a
mental process, and, therefore, to patent-ineligible subject matter under
§ 101.
The patent statute provides that a patent may be obtained for "any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof." 35 U.S.C. § 101. Yet the Supreme
Court has "long held that this provision contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
3 The Examiner indicates at page 8 of the Final Office Action that
claims 59, 69 and 79 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shavit. Because claims 59, 69, and 79 depend from independent
claims 52, 62, and 72, respectively, we treat the dependent claims as rejected
under§ 103(a) as unpatentable over Shavit and Wood, consistent with the
rejection of independent claims 52, 62, and 72.
3
Appeal2014-002631
Application 10/910,900
patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The Court, thus, has made clear that
"[p]henomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (emphasis added).
Following the Supreme Court, the Federal Circuit has similarly held
that mental processes are not patent-eligible subject matter. In this regard,
the court has explained that methods that can be performed entirely in the
human mind are unpatentable not because "there is anything wrong with
claiming mental method steps as part of a process containing non-mental
steps," but rather because "methods which can be performed entirely in the
human mind are the types of methods that embody the 'basic tools of
scientific and technological work' that are free to all men and reserved
exclusively to none." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (citation omitted).
Appellants argue that the machine-or-transformation test applied by
the Examiner is not the exclusive test for determining patent eligibility under
35 U.S.C. § 101, and that additional indicia must be considered before
concluding that a claim at issue is not patent-eligible under § 101 (App.
Br. 5---6). We agree. Yet the dispositive issue here is not whether the claims
satisfy the machine-or-transformation test or whether the claims are "drawn
to a specific way of 'doing something with a computer,"' as Appellants
maintain (id. at 10). Rather, the issue is whether the claims recite a mental
process (i.e., steps that, as the Examiner reasoned, can be performed by a
4
Appeal2014-002631
Application 10/910,900
human being without the use of any machine), which is an abstract idea and,
therefore, patent-ineligible.
Appellants argue that the limitations of claim 52 "intimately involve
the participation of a hardware device" (Reply Br. 5). But Appellants do not
argue that the method steps of claim 52 cannot be performed manually or
mentally.
The Federal Circuit made clear in CyberSource that a method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101. CyberSource, 654 F.3d at 1373. And mental
processes remain patent-ineligible, even when automated, to reduce the
burden on the user of what once could have been done with pen and paper.
Id. at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson, [ 409 U.S. 63 (1972)].").
We conclude that claims 52, 54, and 57---60 are directed to a mere
mental process. Therefore, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101.
Obviousness
Independent claims 52, 62, and 72 and dependent claims 54, 59, 60, 64, 69,
70, 74, 79, and 80
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 52, 62, and 72 under 35 U.S.C. § 103(a)
because Wood, on which the Examiner relies, does not disclose or suggest
"granting an administrative user of the partner organization administrative
access to perform actions on the group of buyer organizations without
requiring a separate granting of access for each buyer organization in the
5
Appeal2014-002631
Application 10/910,900
group," as recited in independent claim 52 and similarly recited in
independent claims 62 and 72 (App. Br. 11-14).
Wood is directed to the decentralization of authorization functions in a
shared database system, and discloses that rather than authorization
functions residing solely in the hands of a centralized database administrator,
the functions are distributed to some users of the system (Wood, 352).
Wood discloses, with reference to Figure 1 (reproduced below), on which
the Examiner relies, a list of administrative access types, al-a7.
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