Ex Parte Kymal et al

Patent Trial and Appeal Board

Dec 18, 2015

13616033 (P.T.A.B. Dec. 18, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/616,033 09/14/2012
22045 7590 12/22/2015
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Chandran K ymal
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.
OEM0108R2 8187
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/22/2015 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@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRAN KYMAL and GREGORY FRANCIS GRUSKA
Appeal 2015-008131
Application 13/616,033 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BA YAT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 2
STi\TE1\1ENT OF THE Ci\.SE
Appellants3 appeal 35 U.S.C. § 134(a) from the Examiner's rejection
of claims 10-12, 15-17, and 20-22. 4 We have jurisdiction under
35 U.S.C. § 6(b ).
1 The reissue application on appeal seeks to reissue US Patent 7,818,192 B2
issued on October 19, 2010, based on application 10/547,254, filed May 30,
2006, which is a national stage entry of PCT/US04/06227, filed March 1,
2004. "Reissue is based on addition of claims to capture unclaimed subject
matter relating to other aspects of the invention" (see Reissue Application
filed in accordance with MPEP 1414 on September, 14, 2012).
2 Our decision references Appellants' Appeal Brief ("Br.," filed Feb. 16,
2015), and the Examiner's Answer ("Ans.," mailed July 10, 2015).
3 Appellants identify the real party in interest as "Omnex Systems, LLC."
Br. 2.
Appeal 2015-008131
Application 13/616,033
We AFFIRM.
STATEMENT OF THE DECISION
INVENTION
Appellants' invention "relate[s] generally to enterprise and supply
chain quality management." US Patent 7,818,192, col. 1, 11. 13-14. Claims
10, 15, and 20 are the only independent claims. Claim 10, reproduced below
(with numbering in brackets added), is illustrative of the subject matter on
appeal.
10. A computer-implemented method comprising:
[a] analyzing a plurality of processes or products, by a
computer;
[b] recognizing a similarity between one or more processes
or products used in the creation of a new product with
similar processes or products used in the creation of a
first existing product, based on the analysis, via the
computer;
[ c] for at least one of the similar processes or products,
associating documentation, via the computer, previously
associated with the first existing product, with the new
product, such that process documentation for the new
product is automatically established and associated with
the new product from the existing documentation
associated with the first existing product;
[ d] establishing, by the computer, one or more associations
between at least a first portion of content in the
documentation associated with the first existing product
and a second portion of content in the process
documentation for the new product;
[ e] recognizing, by the computer, a change to either portion
of content; and
4 Claims 1-9, 13, 14, 18, 19, 23, and 24 have been canceled. Id., Claims
App.
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Application 13/616,033
[ ±l propagating the change to the associated portion of
content in the document containing unchanged content
and to any other associated portions of content in other
documents, such that all portions of content associated to
the changed portion of content reflect the change
recognized in the changed portion of content.
Br., Claims App.
REJECTIONS
The following rejections are before us for review:
Claims 10-12, 15-17, and 20-22 stand rejected as being directed to
non-statutory subject matter under 35 U.S.C. § 101.
Claims 10-12, 15-17, and 20-22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Anderson (US 5,787,448, iss. July 28, 1998)
and Hsu (US 6,377,956 Bl, iss. Apr. 23, 2002).
ANALYSIS
Rejection under 35 US.C. § 101
We are not persuaded the Examiner erred in rejecting claims 10-12,
15-17, and 20-22 as being directed to non-statutory subject matter under 35
U.S.C. § 101.
Appellants do not dispute that the claims are directed to a patent in-
eligible judicial exception, but argue "[b ]ecause the claims clearly include
limitations beyond the scope of the identified judicial exception, the
streamlined eligibility analysis applies." Br. 6. In particular, Appellants
contend
there are a number of steps "recognizing similarities ... ;
automatically establishing documentation ... ; automatically
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Application 13/616,033
[sic] content associations ... ; propagating changes ... ; etc." that
take the claimed subject matter far beyond mere "associating
documents based upon certain criteria." Also, because the claim
would require an infringer to practice all limitations set forth
therein, and as limitations beyond "associating documents
based upon certain criteria" are claimed, it would be impossible
for Applicant's claims, when viewed as a whole, to tie up
"associating documents based upon certain criteria" such that
others could not practice this identified exception.
Br. 6-7.
To that end, Appellants conclude the claims do not seek to tie up the
judicial exception, because their eligibility is self-evident. We disagree.
Instead, we look for additional elements that can transform the nature of the
claim into a patent-eligible application of the judicial exception. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) ("Those
'additional features' must be more than 'well-understood, routine,
conventional activity."'). Despite its arguments that the claim steps add
enough to make the claims patentable, Appellants fail to identify any
language in the claims or the Specification demonstrating that the generic
technical elements operate in an unconventional manner or how the
invention improves over the prior art. Instead, through the bare recitation of
the steps "analyzing," recognizing," "establishing," and "propagating," "by a
computer," the claims are specified at a "high level of generality," which the
Federal Circuit has found to be insufficient to supply an inventive concept.
Id. at 716.
We further note that the test elucidated in Alice5 and Mayo 6 does not
require us to anticipate the number and feasibility of non-infringing
s Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
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Appeal 2015-008131
Application 13/616,033
alternatives to gauge an invention's preemptive effect in order to determine
whether a claim is patent-eligible under § 101. In this part of the test, our
focus is to determine whether additional limitations contain an "inventive
concept" that is "sufficient to ensure that the claim in practice amounts to
'significantly more' than a patent on an ineligible concept." DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). This is the
basis for the rule that the unpatentability of judicial exceptions "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment," despite the fact that doing so reduces the
amount of innovation that would be preempted. Diamond v. Diehr, 450 U.S.
175, 191 (1981); see also Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at
1303; Bilski v. Kappas, 561 U.S. 593, 612 (2010); Parker v. Flook, 437 U.S.
5 84, 593 ( 1978). In fact, our reviewing court recently stated that "[ w ]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics Inc. v. Sequenom
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly, we are not persuaded of Examiner error, and thus, we
sustain the rejection of claims 10-12, 15-17, and 20-22 under 35 U.S.C.
§ 101.
Rejection under 35 USC§ 103(a)
Appellants' argue that the Examiner's finding with regards to
limitation [b] of claim 10 is erroneous because "the product manual [in Hsu]
is derived based on components of the new product, but has no enumerated
6 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012).
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Application 13/616,033
relationship to 'a first existing product'." Br. 8. We are not persuaded of
Examiner error because Appellants have not explained why a previous
version of a product, as proffered by the Examiner (see Ans. 5---6), cannot
reasonably be interpreted as a first existing product in light of the
Specification.
With respect to limitation [c] of claim 10, Appellants contend "[t]he
results of the similarity search are sorted by ranking and manually selected
in Hsu ... [and] the cited combination does not result in automatic
establishment and association of documents with the new product
.... [because a] human must intervene, significantly changing the process."
Br. 8. Appellants do not provide any evidence in support of their contention,
but the Examiner points out that "[ w ]hile Hsu' s system enables authors to
edit and create new documents, the system generates the manual
automatically when such editing is not required by reusing documents
utilized in creating manuals for a previous version of the product." See Ans.
7-8, citing Hsu col. 16, 11. 24--33, 43--45. As such, we are not persuaded of
error on the part of the Examiner, and thus, we sustain the rejection of claim
10 under 35 U.S.C. § 103(a). Because Appellants rely on the same
arguments in contesting the rejection of claims 11, 12, 15-17, and 20-22
(see Br. 8), we sustain the rejection of these claims for the same reasons.
DECISION
The Examiner's decision to reject claims 10-12, 15-17, and 20-22
under 35 U.S.C. § 101 is AFFIRMED.
The Examiner's decision to reject claims 10-12, 15-17, and 20-22
under 35 U.S.C. § 103(a) is AFFIRMED.
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Application 13/616,033
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) (2011).
AFFIRMED
Ssc
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