Ex Parte Khusial et al

Patent Trial and Appeal Board

Mar 14, 2013

10908121 (P.T.A.B. Mar. 14, 2013)

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.
10/908,121 04/28/2005 Darshanand Khusial CA920040132US1 5121
46320 7590 03/14/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
03/14/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte DARSHANAND KHUSIAL, 7
VICTOR CHAN, 8
and MARK WILLIAM HUBBARD 9
___________ 10
11
Appeal 2011-004311 12
Application 10/908,121 13
Technology Center 3600 14
___________ 15
16
17
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
MICHAEL W. KIM, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 12, 2010) and the Examiner’s Answer (“Ans.,” mailed
October 13, 2010).
Darshanand Khusial, Victor Chan, and Mark William Hubbard 2
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 3
1-14, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a way of adapting commerce system 6
components in an SOA (Service Oriented Architecture) through business 7
contexts that can include determining a set of required business processes for 8
a proposed solution. Existing ones of the commerce system components in 9
the SOA can be identified as being able to support the set of required 10
business processes. Also, new commerce system components can be created 11
such that the existing ones of the commerce system components and the 12
created components in combination support the set of required business 13
processes for the proposed solution (Spec. 3, [Para 9]). 14
An understanding of the invention can be derived from a reading of 15
exemplary claim 1, which is reproduced below [bracketed matter and some 16
paragraphing added]. 17
1. A method 18
for adapting commerce system components in a service 19
oriented architecture (SOA) through business contexts, 20
the method comprising: 21
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[1] determining 1
by a solution builder executing in memory by a 2
processor of a computer 3
a set of required business processes for a proposed 4
solution; 5
[2] identifying 6
by the solution builder 7
existing ones of the commerce system components 8
in the SOA 9
able to support said set of required business 10
processes 11
and 12
creating new commerce system components 13
such that 14
said existing ones of the commerce system 15
components 16
and 17
said created components 18
in combination 19
support said set of required business 20
processes for said proposed solution; 21
[3] selecting 22
by the solution builder 23
a set of contexts 24
to adapt 25
said existing ones of the commerce system 26
components 27
and 28
said created components 29
to support said set of required business processes 30
for said proposed solution; 31
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and, 1
[4] creating 2
by the solution builder 3
an activity for said proposed solution 4
utilizing said selected set of contexts. 5
The Examiner relies upon the following prior art: 6
Wernli US 5,974,127 Oct. 26, 1999
Claims 1-7 stand rejected under 35 U.S.C. § 101 as directed to non-7
statutory subject matter. 8
Claims 1-14 stand rejected under 35 U.S.C. § 102(b) as anticipated by 9
Wernli. 10
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Wernli. 12
ISSUES 13
The issue of statutory subject matter turns primarily on whether the 14
claims rejected recite more than an abstract concept. The issues of novelty 15
and obviousness turn primarily on whether the Appellants presented any 16
arguments as to whether any specific limitations were not described by 17
Wernli. 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
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Facts Related to Claim Construction 1
01. The disclosure contains no lexicographic definition of 2
“context.” 3
02. Appellants provide a definition of “context” from Merriam-4
Webster's Dictionary as “the interrelated conditions in which 5
something exists or occurs.” App. Br. 14. 6
Facts Related to the Prior Art 7
Wernli 8
03. Wernli is directed to planning telecommunications systems 9
including outside plant, switching equipment, interoffice 10
connections and common systems based on current and future 11
demands, inventories, capacity, and business constraints. Wernli 12
1:50-55. 13
04. The switching technology component covers all common 14
telephony switch types. The critical components of the switching 15
process are to identify the specific service demands for all 16
switches, the inventory for these switches, the rules guiding the 17
growth of the switches and the specific strategies for each 18
individual switch on job timing, traffic patterns, software, and 19
additional hardware requirements. Wernli 6:5-15 20
05. Local equipment requirements are sized, the shortages 21
calculated are analyzed and, based on rule sets, a solution is 22
determined. The solution is then sized appropriately based on 23
strategies by a hierarchical process. Additional local equipment 24
requirements are determined based on the rule sets. These 25
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additional requirements cover details such as power cables and 1
software enhancements. If the switch is a remote switch or a non-2
ISDN switch with ISDN demand, a set of rules is used to 3
determine if an associated switch needs to be examined. Wernli 4
7:5-25. 5
06. Output is generated at 148 to produce a bill of materials that 6
will be used by switch planners and by network modelers. This 7
data is used to plan jobs and to do what-if scenarios where 8
different rules or strategies are modified, resulting in 9
requirements for different equipment. The switch module will 10
produce demand requirements for common systems. The switch 11
module will also produce numerous reports that identify 12
peripherals that are close to full capacity. Wernli 7:30-38. 13
07. Data is extracted based on the scope specified for the current 14
run. The scope can range from a single central office to an entire 15
Local Access and Transport Area (LATA). Parameters and rules 16
are set at block 162. These rules define growth and technology 17
migration strategies for all CO terminating equipment and IOF 18
transports. These rules can be changed to allow analysis of 19
technical options required for meeting network growth 20
requirements. Wernli 8:5-12. 21
08. The primary output of the interoffice module contains an 22
inventory of existing equipment and transport systems in the 23
specified areas, a listing of proposed additional equipment and 24
transport systems, and a listing of proposed fiber cable and WDM 25
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placements. This module can also produce itemized cost 1
summaries, a job-oriented output for input to corporate job 2
tracking systems, and the proposed fiber cable and WDM 3
placements for integration with the OSP module. The itemized 4
cost summary output can also be passed to the common system 5
module to plan alarm, power, floor space, and other common 6
systems technologies. Wernli 9:60 – 10:4. 7
09. The Business Forecast Analysis Module (BFAM) database 238 8
contains demand forecasts. A processor containing technology 9
processes performs the computations necessary to plan and 10
engineer a telecommunications network. Wernli 11:35-46. 11
ANALYSIS 12
Claims 1-7 rejected under 35 U.S.C. § 101 as directed to non-statutory 13
subject matter. 14
We are not persuaded by the Appellants’ argument that 15
[t]he fact that claim 1 recites the creation by a solution builder 16
(that executes in memory by a processor of a computer) an 17
activity for the proposed solution utilizing the selected set of 18
contexts hardly reflects an attempt to claim an abstract idea. 19
App. Br. 7. 20
The Appellants argue these claim as a group. Accordingly, we select 21
claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii). 22
These claims are to adapting commerce system components. Claim 1 is 23
independent. Claim 1 recites steps including determining processes, 24
identifying and creating components, selecting contexts, and creating an 25
activity. 26
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The Examiner found that claim 1 performs no physical transformation 1
and does not recite how a specific machine is used, and therefore recites no 2
more than an abstract idea. The Appellants contend that claim 1 is to more 3
than an abstract idea. 4
Here we disagree with the Appellants. The Supreme Court held that 5
claims that explained the basic concept of an activity (hedging) would allow 6
the Appellant to pre-empt the use of this approach in all fields, and would 7
effectively grant a monopoly over an abstract idea. Bilski v. Kappos, 130 8
S.Ct. 3218, 3231 (2010). Abstract ideas are not patent eligible. Id. at 3225. 9
Claim 1 does no more than lay out the concept of adapting commerce 10
system components. The claims neither refer to a specific machine by 11
reciting structural limitations to any apparatus, nor recite any specific 12
operations that would cause a machine to be the mechanism to determine, 13
identify, select, or create information. Indeed to determine, identify, select, 14
or create information requires no machine, only the conscious thought of the 15
one controlling the operation. Absent any specific structural limitations on 16
how one acts to perform these steps, these claims recite no more than the 17
abstract concept of adapting commerce system components. As in Bilski, a 18
patent including these claims would allow the Appellants to pre-empt the use 19
of this approach in all fields, and would effectively grant a monopoly over 20
an abstract idea. 21
As to the “solution builder executing in memory by a processor of a 22
computer,” 23
even if some physical steps are required to obtain information 24
from the database (e.g., entering a query via a keyboard, 25
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clicking a mouse), such data-gathering steps cannot alone 1
confer patentability. 2
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 3
2011). Simply using some solution builder executing in memory by a 4
processor of a computer in some undefined manner alone cannot confer 5
patentability. More recently, claims were held to be non-statutory where 6
the claims here recite only that the method is “computer aided” 7
without specifying any level of involvement or detail. The fact 8
that certain algorithms are disclosed in the specification does 9
not change the outcome. In considering patent eligibility under 10
§ 101, one must focus on the claims. This is because a claim 11
may “preempt” only that which the claims encompass, not what 12
is disclosed but left unclaimed. 13
Dealertrack v. Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012). 14
Subsequently, in Bancorp Services, L.L.C. v. Sun Life Assur. Co. of 15
Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012), the court found that the 16
interchangeability of certain mental processes and basic digital computation 17
help explain why the use of a computer in an otherwise patent-ineligible 18
process for no more than its most basic function—making calculations or 19
computations—fails to circumvent the prohibition against patenting abstract 20
ideas and mental processes. The Court held that using a computer to 21
accelerate an ineligible mental process does not make that process patent-22
eligible, but to salvage an otherwise patent-ineligible process, a computer 23
must be integral to the claimed invention, facilitating the process in a way 24
that a person making calculations or computations could not. The court 25
provided a bottom line analysis that when the insignificant computer-based 26
limitations are set aside from those claims that contain such limitations, the 27
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question under § 101 reduces to an analysis of what additional features 1
remain in the claims. 2
In claim 1, the nominal reference to a solution builder executing in 3
memory by a processor of a computer is no more than such a way to 4
accelerate an ineligible mental process, and when the insignificant 5
computer-based limitations are set aside from this claim, the question under 6
§ 101 reduces to an analysis of whether the determining processes, 7
identifying and creating components, selecting contexts, and creating an 8
activity are more than abstract concepts. 9
The court also found that where the only difference between the claims 10
is the form in which they were drafted, the district court correctly treated the 11
system and method claims at issue in this case as equivalent for purposes of 12
patent eligibility under § 101. 13
Claims 1-14 rejected under 35 U.S.C. § 102(b) as anticipated by Wernli. 14
Claims 1-14 rejected under 35 U.S.C. § 103(a) as unpatentable over Wernli. 15
We are unable to discern any contention as to why any specific claim 16
limitation is not described by Wernli. While we perceive some discussion as 17
to the construction of the word “context,” the proffered dictionary definition 18
as “the interrelated conditions in which something exists or occurs” appears 19
to comport with the ordinary definition and with how the Examiner 20
interpreted that word. 21
Essentially, Appellants appear to simply make a blanket allegation that 22
the Examiner failed to present a prima facie case. We find that the Examiner 23
made specific factual findings as to where Wernli describes each of the 24
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claims’ limitations. Ans. 9-17. We agree that Wernli in fact describes all 1
four of the limitations in claim 1. FF 03-09. 2
CONCLUSIONS OF LAW 3
The rejection of claims 1-7 under 35 U.S.C. § 101 as directed to non-4
statutory subject matter is proper. 5
The rejection of claims 1-14 under 35 U.S.C. § 102(b) as anticipated by 6
Wernli is proper. 7
The rejection of claims 1-14 under 35 U.S.C. § 103(a) as unpatentable 8
over Wernli is proper. 9
DECISION 10
The rejection of claims 1-14 is affirmed. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2011). 14
15
AFFIRMED 16
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