Ex Parte Kohler et al

Patent Trial and Appeal Board

Oct 22, 2018

12025889 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/025,889 02/05/2008
50400 7590 10/24/2018
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Mathias Kohler
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.
2058.280US 1 2085
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIAS KOHLER and ANDREAS SCHAAD
Appeal2017-008343 1
Application 12/025,8892
Technology Center 3600
Before JEAN R. HOMERE, JAMES B. ARPIN, and
AARON W. MOORE, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of a rejection of claims 1-
4, 6-15, and 17-24. Br. 1. Claims 5 and 16 are cancelled. RCE Amend. 3,
6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In this Decision, we refer to Appellants' Appeal Brief ("Br.," filed
December 7, 2016) and Reply ("Reply," filed May 10, 2017); the Final
Office Action ("Non-Final Act.," mailed May 19, 2016); the Amendment &
Response Under 37 C.F.R. § 1.116 ("RCE Amend.," filed October 29,
2015); the Examiner's Answer ("Ans.," mailed March 10, 2017); and the
Specification ("Spec.," filed July 20, 2011).
2 According to Appellants, the real party-in-interest is SAP SE. Br. 2.
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Application 12/025,889
STATEMENT OF THE CASE
Appellants' claimed subject matter relates to methods, systems, and
media for "determin[ing] whether the minimum number of resources is
available to be assigned to the roles and tasks in order to avoid deadlock and,
if so, then assigning actual resources to the relevant roles and tasks." Spec.
The workflow may include tasks, roles assigned to the tasks, and
security constraints related to the tasks. A workflow[] may
contain branches and therefore parallel executions of tasks in an
arbitrary order during run-time may be specified ( e.g., as a non-
linear workflow). A data structure (e.g., a constraint-based
relation graph) may be generated to represent relationships
between the tasks and the security constraints ( e.g., the
assignment of various security constraints to one or more tasks
of the workflow).
Id. ,r 13. Security constraints "may include separation of duty (SoD)
constraints or binding of duty (BoD) constraints. A separation of duty
constraint[] may require that certain tasks or processes of a workflow, which
are declared as exclusive, have to be performed by or using different
resources (e.g., different users)." Id. ,r 21. A deadlock occurs when an
allocation of resources does not permit all tasks in a workflow to be
completed. See id. ,r 24. With a proper allocation of resources to roles and
tasks, a workflow can be completed without a deadlock. Id. ,r 25.
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Figure 5 is reproduced below.
FIC7-. 5
Spec. Fig. 5. Figure 5 depicts original workflow 502 and the resulting user
(e.g., resource) allocations for each of graph variants 508 and 510. Id. ,r,r 76,
77. Referring to workflow 502, SoD 1 defines activities 1 and 2 as
exclusive, and SoD 2 defines activities 104 and 106 as exclusive. Id. ,r 23.
Thus, the same user may not perform either activities 102 and 104 or
activities 104 and 106. Id. Specifically, for graph variant 508, two users
Uc-1 and Uc-2 are allocated to role "C," and one user UM-1 is allocated to role
"M." Id. ,r 77 (operation 516 (Step 3)). In graph variant 510, one user Uc_1
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is allocated to role "C," and one user UM-l is allocated to role "M." Id.
Either allocation of resources depicted in step 516 allows for completion of
workflow 502, but the second allocation employs fewer resources than the
first allocation.
As noted above, claims 1--4, 6-15, and 17-24 are pending, and claims
1, 12, 23, and 24 are independent. Br. Claims App'x. Claim 1 is directed to
methods, claims 12 and 23 are directed to systems, and claim 24 is directed
to non-transitory machine-readable media. Id. Claims 2--4 and 6-11 depend
directly or indirectly from claim 1, and claims 13-15 and 17-22 depend
directly or indirectly from claim 12. Id.
Claim 1, reproduced below, is illustrative.
1. A computer-implemented method comprising:
retrieving information from a database, the information
describing a processing workflow including a plurality of
processing tasks, roles assigned to the plurality of processing
tasks, and security constraints related to the plurality of
processing tasks including at least one separation of duty
constraint that defines a portion of the plurality of processing
tasks as exclusive and requiring performance by different
resources;
automatically generating, using at least one processor, a
data structure representative of relationships between the
plurality of processing tasks and the security constraints
including the at least one separation of duty constraint, the data
structure including the plurality of processing tasks, with at least
one processing task assigned to more than one role;
splitting the data structure into multiple data structures,
each of the multiple data structures including all of the plurality
of processing tasks from the data structure, defining an
organization of the processing tasks in a manner so that the
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Id.
security constraints and relationships are preserved but no
processing task is assigned to more than one role; and
determining, for each of the multiple data structures and
using the at least one processor, a minimum number of resources
needed to execute the plurality of processing tasks in the data
structure;
selecting one of the multiple data structures based on a
determination of which of the multiple data structures has the
least number of resources needed to execute the plurality of
processing tasks defined therein;
assigning, using the at least one processor, the plurality of
processing tasks to resources using the organization defined in
the selected one of the multiple data structures, thereby avoiding
processing deadlocks.
THE REJECTION
Claims 1--4, 6-15, and 17-24 stand rejected under 35 U.S.C. § 101
"because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more," i.e., because the claimed methods and systems are patent-ineligible
subject matter. Final Act. 4.
Specifically, the Examiner concludes that
gathering processing workflow information, generating data
structure representing relationships between processing tasks
and security constraints, splitting the data structure, determining
a minimal number of resources to execute the processing tasks,
selecting one of the data structures and assigning tasks to
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resources would be directed towards an idea of itself, which is an
example identified by the courts as an abstract idea.
Id. at 4.
The Examiner also concludes that the claims do not add "significantly
more" to the abstract idea. In particular:
The claims do not include improvements to another technology
or technical field; nor do they include improvements to the
functioning of the computer itself. The claims merely amount to
the application or instructions to apply the abstract idea on a
general purpose computer, and require nothing more than a
generic computer system ( e.g. a computer system comprising a
generic processor and a generic associated server) to carry out
the abstract idea itself. Further, the claims do not include specific
limitations adding unconventional steps that confine the claim to
a particular useful application. Nor do they include limitations
beyond generally linking the use of the abstract idea to a
particular technological environment. As such, the claims, when
considered as a whole, are nothing more than the instruction to
implement the abstract idea in a well-understood, routine and
conventional technological environment.
Id. at 5 (emphasis added); see Br. 10. The Examiner further concludes that
"[t]he dependent claims further limit the abstract idea without adding
significantly more." Id.
PRINCIPLES OF LAW
We have reviewed the appealed rejection for error based upon the
issues identified by Appellants, given the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
As to eligibility under 35 U.S.C. § 101, a patent may be obtained for
"any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." The U.S. Supreme
Court has "long held that this provision contains an important implicit
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exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014)
( emphasis added; quoting Ass 'n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-83 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id.
The Court acknowledged, 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. We, therefore, look to whether the
claims focus on a specific method or means that improves the relevant
technology or instead are directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)
("Enfzsh"). If the claims are not directed to an abstract idea, the inquiry
ends. Id. at 1339. Otherwise, the inquiry proceeds to the second step, in
which the claim limitations are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79).
Central to our analysis is the fundamental principle that the Alice
framework must be applied to the claims, as properly construed. As our
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reviewing court has stated, "[ t ]he § 101 inquiry must focus on the language
of the Asserted Claims themselves." Synopsys. Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016); see also Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) ( admonishing that "the important inquiry for a § 101 analysis is to
look to the claim" ( emphasis added)); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
(focusing on "whether the claims of the asserted patents fall within the
excluded category of abstract ideas" ( emphasis added)).
ANALYSIS
Appellants present four contentions allegedly demonstrating why the
pending claims are not directed to an abstract idea without significantly
more. We address these contentions below.
A. Alice Step One
1. Proper Identification of Abstract Idea
First, Appellants contend that the Examiner erred by failing to
"explain why specific claim limitations are directed to an abstract idea, as
required for a prima facie rejection, and did not reasonably tie the facts in
any of the cited cases to the presently pending claims." Br. 11; Reply 2-3.
Under Office guidance,
when making a subject matter eligibility rejection and reciting a
judicial exception, in addition to identifying specific claim
limitations, "[t]he rejection must ... explain why those claim
limitations set forth a judicial exception ( e.g., an abstract idea)
Examiners should be familiar with any cited decision relied
upon in making or maintaining a rejection to ensure that the
rejection is reasonably tied to the facts of the case and to avoid
relying upon language taken out of context."
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Br. 11 (quoting Comm'r for Patents Memorandum, "Formulating a Subject
Matter Eligibility Rejection and Evaluating the Applicant's Response to a
Subject Matter Eligibility Rejection," 2-3 (May 4, 2016) (bolding added)).
As noted above, the pending claims allegedly are directed to the abstract
idea of "determining a minimal number of resources to be assigned to roles
in order to execute a plurality of tasks of each of the multiple data structures;
the determination based on relationships between the plurality of tasks and
security constraints including at least one separation of duty constraint."
Final Act. 4; see Br. 11. Appellants contend that this statement fails to meet
the requirements of the Office guidance.
Here, the Examiner explained that "Applicant argues the claims have
been amended to make clear that the tasks are processing tasks and that the
determining, selecting, and assigning operations allow processing deadlocks
to be avoided." Final Act. 2 ( emphasis added). The Examiner found that,
although the claims were amended during prosecution specifically to tie the
recited steps to a processor, i.e., computer technology (RCE Amend. 2, 10);
the processor is used merely to perform steps that may be performed by pen
and paper (see Final Act. 2). In support of this conclusion, the Examiner
cites to SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950
(Fed. Cir. 2014). As the Manual of Patent Examining Procedure indicates,
analyzing information by the steps people go through in their minds, without
more, is essentially a mental process within the abstract-idea category.
MPEP 2106.04(a)(2)(III) (citing SmartGene, 555 F. App'x at 955).
Although the embodiment depicted in Figure 5, reproduced above, is
encompassed within the scope of the pending claims (see Spec. ,r,r 4, 8, 9), a
person may avoid a deadlock and determine the minimum number of
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resources necessary to complete workflow 502 without the use of a
processor. Final Act. 2-3 ("For instance, someone could gather all the data
and create tables or spreadsheets to perform the analysis."). Here, the
processor does not improve the functioning of a computer or related
technology; it simply allows the method or computer implemented steps-
the abstract idea-to be performed more quickly or to avoid deadlocks more
easily and to determine the minimum resources in more complicated
workflows. Id. at 3 ("If the tasks of the process are assigned and performed
more quickly and without delay ( avoiding processing deadlocks), it is
considered a business improvement not an improvement to the computer or
technology."); see Spec. ,r,r 22 ("The confirmation of the amount or number
of resources minimally needed to complete a workflow becomes
substantially more complicated as the number of constraints applicable to
the workflow increases."), 26 ("One approach is to simulate every possible
resource-task assignment for a process or workflow, and in this way
determine whether the workflow can be completed in a deadlock free
manner. However, the performance of such a 'brute force' series of
simulations becomes increasingly difficult as the quantity of resources (e.g.,
a number of users) which may perform the tasks of a process increases.
Further, every time a particular resource becomes available or unavailable
(e.g., a user joins or leaves a set of users), new simulations and calculations
are required."). Thus, we agree with the Examiner's identification of the
abstract idea and the reference to SmartGene in support of this identification.
2. Level of Abstraction and Claim Language
Second, Appellants contend that, given the Federal Circuit's Enfzsh
decision, the Examiner erred by "describing the claims at such a high level
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of abstraction and untethered from the language of the claims." Br. 13
(quoting Enfzsh, 822 F.2d at 1337); Reply 3--4. In particular, Appellants
contend that whether the pending claims recite an improvement to the
functioning of a computer is relevant to step one of the Alice/Mayo analysis.
Br. 13. Appellants assert that the Examiner failed to consider such
improvement here. Id. We disagree.
As the Examiner notes, "[a]s claimed, data is collected describing a
processing workflow. Given the broadest reasonable interpretation, a
processing workflow could be any workflow describing any process." Final.
Act. 2. The Examiner found that "the steps of retrieving, generating,
splitting, determining, selecting and assigning steps may all be performed by
pen and paper, thus requiring the rejection under 35 USC 101." Id. at 3.
Because the claims recite ''processing tasks" contained in a ''processing
workflow" and the result of the recited processes is avoiding ''processing
deadlocks," however, Appellants contend that "the claims cannot be
properly interpreted to cover such an assignment of resources in a manual
workflow." Reply 3.
Appellants misunderstand the Examiner's rejection. The Examiner
does not find that the claims cover the manual task, but, instead, that the
claims merely describe the implementation of a mental process by means of
conventional computer components. Ans. 3 ("[E]ven if the invention
requires the use of a computer, the claim does not constitute a technological
invention because this is not a technical solution but more akin to creating
organizational data structures used to assign tasks to resources."); see
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ("Methods which can be performed entirely in the human mind are
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unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational 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."). Here, the recited "processing" limitations are
directed to the abstract idea, rather than any improvement in the employed
computer technology. Final Act. 3; see Ans. 3. Further, the level of
abstraction at which the Examiner describes the invention does not change
the accuracy of the Examiner's determination. Apple v. Ameranth Inc., 842
F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally be
described at different levels of abstraction."). Thus, the Examiner
considered the improvements allegedly recited in the pending claims but
found that the claims recited an abstract idea. Final Act. 2-3. We agree.
3. "Avoiding Processing Deadlocks" Is Not a Technological
Improvement
Third, Appellants contend that the Examiner erred in determining that
the recitation "thereby avoiding processing deadlocks" was a statement of
intended use and did not recite a technological improvement in computer
capabilities. Br. 13. If a deadlock occurs, the computer becomes "stuck."
Id. at 10. Appellants assert that processing deadlocks are a problem that
does not exist outside of computer technology and that avoiding such
deadlocks is an improvement to computer technology. Id. ("In the instant
claims, 'thereby avoiding processing deadlocks' unambiguously ties the
claims to an improvement in computer capabilities."); see RCE Amend. 10-
11. We disagree.
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As the Specification explains, "[ t ]he integration of such security
constraints into a workflow may result in policy-based deadlocks, as the
constraints imply the requirement that a certain number of resources ( e.g.
users) are available to perform the processes or tasks of a workflow." Spec.
,r 21. Further, the Specification explains that "with a proper allocation of
resources to roles ... and tasks, the workflow 100 can complete without
deadlock occurring." Id. ,r 25. Thus, avoidance of deadlocks depends on the
proper allocation of resources to perform the desired tasks, rather than the
use of a processor or other computer technology.
We are not persuaded that the Examiner erred in determining that the
pending claims are directed to an abstract idea.
B. Alice Step Two
Fourth, Appellants contend that the Examiner erred by addressing the
recited claim limitations with inappropriate brevity, thereby failing to
convey sufficient context when alleging that additional claim limitations do
not amount to significantly more than a judicial exception. Br. 14; Reply 4--
6. In particular, Appellants contend that the Examiner fails to address the
additional limitations of the pending claims, apart from the processor.
Reply 5. Thus, Appellants allegedly cannot tell which limitations of the
pending claims are allegedly, conventional computer elements. Id. We
disagree.
Pending claims 1, 12, and 23 recite only a few structural limitations,
namely, a memory, including a database or first and second components, and
one or more processors. See Br. Claims App'x. (Claims 1, 12, and 23).
Pending claim 24 recites a "non-transitory machine-readable medium"
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storing instructions that are performed by "at least one processor." See id.
(Claim 24). Moreover, the Specification explains that:
A module, logic, component or mechanism (herein after
collectively referred to as a "module") may be a tangible unit
capable of performing certain operations and is configured or
arranged in a certain manner. In example embodiments, one or
more computer systems (e.g., a standalone, client or server
computer system) or one or more components of a computer
system ( e.g., a processor or a group of processors) may be
configured by software ( e.g., an application or application
portion) as a "module" that operates to perform certain
operations as described herein.
In various embodiments, a "module" may be implemented
mechanically or electronically. For example, a module may
comprise dedicated circuitry or logic that is permanently
configured (e.g., within a special-purpose processor) to perform
certain operations. A module may also comprise programmable
logic or circuitry (e.g., as encompassed within a general-purpose
processor or other programmable processor) that is temporarily
configured by software to perform certain operations. It will be
appreciated that the decision to implement a module
mechanically, in dedicated and permanently configured
circuitry, or in temporarily configured circuitry ( e.g., configured
by software) may be driven by cost and time considerations.
Spec. ,r,r 93, 94 (emphasis added); see id. ,r,r 95-105 (describing other
conventional computer elements). According to Appellants, the Examiner
determined that "the additional limitations, including the claimed processor,
are viewed as conventional computer elements ... and do not add
significantly more to the abstract idea." Reply 5 (quoting Br. 14). The
additional limitations of the methods and systems of the pending claims, as
well as the instructions stored on non-transitory machine-readable media and
their operating processor, may be conventional computer elements of
hardware and software. Final Act. 5; Ans. 4; see MPEP 2106.05(d). Thus,
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the Examiner persuasively explained the basis for concluding that the
additional claim limitations do not amount to significantly more than a
judicial exception and in sufficient detail to support the rejection.
We are not persuaded that the Examiner erred in rejecting claims 1--4,
6-15, and 17-24, and we sustain the rejection.
DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1--4, 6-15, and 17-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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