Ex Parte Marseille et al

Patent Trial and Appeal Board

Sep 11, 2018

13458619 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/458,619 04/27/2012 Tina Marseille
52025 7590 09/13/2018
SAP SE c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST A VENUE
NEW CANAAN, CT 06840
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.
2012P00048US 6721
EXAMINER
KLICOS, NICHOLAS GEORGE
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
martin@BMTPATENT.COM
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TINA MARSEILLE, HOLGER DEIST,
CARSTEN SCHMITT, and MARCEL SCHREIER
Appeal2018-002012
Application 13/458,619
Technology Center 2100
Before JOSEPH L. DIXON, JUSTIN BUSCH, and
JOHN D. HAMANN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
JOSEPH L. DIXON.
Opinion Dissenting filed by Administrative Patent Judge JUSTIN BUSCH.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002012
Application 13/458,619
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-3, 6-10, 13-17, and 20-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
The claims are directed to an in place creation of objects. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method implemented by a computing system in
response to execution of program code by a processor of the
computing system, the method comprising:
receiving, via a graphical user interface layout containing
a listing of at least one data element, a request to create an
instance of a data element included in the listing of at least one
data element, the data element to be created being an instance of
a business object metadata model data structure having at least
one attribute field described by metadata, wherein the business
object metadata model data structure defines the relationship
between physical database tables, and the instance represents
specific data and provides a mapping to the underlying database
table storing the specific data; and
presenting, in response to rece1vmg the request, an
expanded user interface element that is expanded in the act of
creating an instance of the data element in a separate frame
within the same graphical user interface layout containing the
listing of the at least one data element, and wherein upon
submission of the instance of the data element to the database
table, the expanded user interface element is closed,
1 Appellants indicated that SAP SE is the real party in interest. (App. Br. 1 ).
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wherein the expanded user interface element is in a fixed
relationship with other user interface elements in the graphical
user interface layout without obscuring the other user interface
elements in the graphical user interface layout, the expanded user
interface element including user interface input fields to receive
values to specify the at least one attribute field of the business
object, and
wherein the at least one attribute of the business object is
described by the metadata and the user interface input fields of
the expanded user interface element are limited to a minimum
number of attribute fields corresponding to a minimum number
of attributes of the business object required to create an instance
of the business object.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kraft
(hereinafter "Kraft")
Kramer
(hereinafter "Kramer")
Sako
(hereinafter "Sako")
Tanaka
(hereinafter "Tanaka")
us 6,084,585
US 2010/0064252 Al
July 4, 2000
Mar. 11, 2010
US 2010/0299622 Al Nov. 25, 2010
US 2011/0214067 Al Sept. 1, 2011
REJECTIONS
The Examiner made the following rejections:
Claims 1-3, 6-10, 13-17, and 20-22 stand rejected under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter. (Final Act. 3-5).
Claims 1, 2, 6-9, 13-16, and 20-22 stand rejected under 35 U.S.C.
§ I03(a) as obvious over Kramer in view of Tanaka and in further view of
Sako. (Final Act. 5-16).
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Claims 3, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Kramer in view of Tanaka and in further view of Sako and
Kraft. (Final Act. 16-18).
ANALYSIS
35 USC§ 101 Rejection
With respect to claims 1-3, 6-10, 13-17, and 20-22, Appellants rely
on the same arguments for patentability for each of the independent claims
and do not set forth separate arguments for patentability. (App. Br. 6-11).
Therefore, we select independent claim 1 as the representative claim for the
group and address Appellants' arguments thereto.
The Examiner found that claim 1, when considered as a whole, is not
meaningfully different than those concepts found by the courts to be
abstract, specifically to the idea of collecting information, analyzing it, and
displaying certain results of the collection and analysis. (Final Act. 3 ( citing
Elec. Power Grp., v Alston S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016))).
Further, the Examiner found the elements of claim 1 to be directed to other
concepts that our reviewing court has also found to be abstract, including
retaining information in navigation of online forms. (Final Act. 4 ( citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
Cir. 2015)) ). Further, the Examiner concludes the claimed solution is not
necessarily rooted in computer technology in order to overcome a problem
arising in the realm of graphical user interfaces ("GUis"). (Final Act. 4).
Finally, the Examiner concludes when considering the claims as a whole the
combination does not amount to significantly more than the abstract idea
because the limitations are mere instructions to implement the abstract idea
on a generic computer. (Final Act. 4).
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The Examiner concludes, under Alice 's2 step 2A, that the claims are
directed to an abstract idea and refer to collecting information, analyzing it,
and displaying certain results of the collection and analysis without limiting
the claim to a technical means for performing the function. (Ans. 3--4). The
Examiner finds that the result focused, functional character of claim 1 's
claim language has been a frequent feature of claims held ineligible by the
courts. (Ans. 3--4). Moreover, the Examiner finds the abstract idea in the
claims is similar to a "pen and paper" and "head in hand" abstract ideas such
as those mentioned in CyberSource3 and Gottschalk. 4 (Ans. 4). Finally, the
Examiner concludes that the claim does not amount to significantly more nor
does the claim recite a non-conventional arrangement of conventional parts
(Ans. 5) to overcome the identified problem.
Appellants contend claim 1 is not directed to a judicial exception and
the claims are subject matter eligible under 35 U.S.C. § 101. (App. Br. 6-
11 ). Appellants argue the Examiner has described the claim at a high level
of abstraction that is untethered from the specific and extensive claim
language. (App. Br. 8). Further, Appellants argue that no allegation has
been presented as to how the specific language of the present claim
"matches" the claims of Electric Power. (App. Br. 8). Moreover,
Appellants contend the claims are not directed to an abstract idea because
the claims are clearly focused on a specific technological improvement ( e.g.
"creating an expanded user interface element in place, without a user being
directed, re-directed, otherwise navigated to a different floorplan or context;
2 Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014)
3 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
4 Gottschalkv. Benson, 409 U.S. 63 (1972).
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expanding the user interface without obscuring or otherwise covering or
hiding any of the other user interface elements of the floorplan"), and not
only populating a generic database. (App. Br. 9-10). Finally, Appellants
contend that the Office has failed to meet its burden of proving the claims
are directed to an abstract idea and "[r]eferring to the extensive language of
at least the three independent claims herein, the Final Action falls far short
of the required explanation of why the elements taken individually and in
combination do not amount to a claim as a whole that is significantly more
than an abstract idea." (Emphasis omitted) (App. Br. 10).
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. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice, 134
S. Ct. at 2354; Gottschalk, 409 U.S. at 67 ("Phenomena 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.").
Notwithstanding that a law of nature or an abstract idea, by itself, is not
patentable, an application of these concepts may be deserving of patent
protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1294, 1296-97 (2012). In Mayo, the Court stated that "to
transform an unpatentable law of nature into a patent-eligible application of
such a law, one must do more than simply state the law of nature while
adding the words 'apply it."' Mayo, 566 at 72 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
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applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 78, 79).
In other words, the second step is to "search for an 'inventive
concept' - i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
on the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo,
566 U.S. at 72-73). "A claim that recites an abstract idea must include
'additional features' to ensure that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea]."' Id. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77-78).
Under the Mayo framework, and considering each of the steps in
claim 1, we agree with Appellants that claim 1 is not directed to a judicial
exception and the claim is subject matter eligible under 35 U.S.C. § 101.
(App. Br. 6-11). The Examiner finds that claim 1 is directed to an abstract
idea - the idea of collecting information, analyzing it, and displaying
certain results of the collection and analysis under the first prong of the Alice
test. (Ans. 3). However, the Examiner's finding merely refers to a gist of
the invention. The Supreme Court "has made it clear ... that there is no
legally recognizable or protected 'essential' element, 'gist' or 'heart' of the
invention in a combination patent." Aro Mfg. Co. v. Convertible Top
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Replacement Co., 365 U.S. 336, 344--45 (1961). Claim 1 does more than
collecting information, analyzing it, and displaying a result. Rather, claim 1
recites additional limitations of a system in response to executing program
code by a processor of the computing system of presenting a user interface
element that is expanded in the action of creating a data element in a frame
within the same user interface and wherein the expanded user interface
element is in a fixed relationship with other user interface elements in the
graphical user interface layout without obscuring the other interface
elements, among other limitations. It is noted, that none of these additional
elements are discussed in either the Final Action or Examiner's Answer.
Thus, we agree with Appellants that the Examiner failed to meet its
burden of proving the claims are directed to an abstract idea and the Office
Action falls short of a required explanation of why the elements either
individually or in combination with the additional elements of the claim,
such as those mentioned above, does not amount to significantly more.
(App. Br. 10). Here, the Examiner did not satisfy the initial burden of
establishing a prima facie case of ineligibility under § 101 by providing an
explanation as to how the claimed subject matter as a whole compares to
subject matter identified as an exception in the prior precedent.
Consequently, the burden never shifted to Appellants to rebut that case. See
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.07
(9th ed. Rev. 08.2017, Jan. 2018) (noting that the initial burden of
establishing a prima facie case of ineligibility under § 101 is on the
Examiner to explain clearly and specifically why claims are ineligible, so
that the applicant has sufficient notice and can respond effectively); see also
.Alice Corp.) 134 S. Ct at 2355 (quoting l)iarnond v. Diehr, 450 U.S. 175,
188, ( 1981) ("[I]t is consistent ,vith the general rule that patent claims 'must
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be considered as a whole.")); Rapid Litig. 1i(~mt. Ltd. v. CellzDirect, inc.,
827 F.3d 1042, 1051 (Fed. Cir, 2016). Therefore if, as here, the answer to
the step 1 question is no, "the inquiry is over: the claim fall within the ambit
of§ 101." CellzDirect, 827 F.3d at 1047.
Accordingly, for the reasons discussed above, we reverse the
Examiner~ s patent eligibility rejection of claim 1 under § 101. Independent
claims 8 and 15 recite limitations commensurate with those in claim 1.
Thus, we reverse the Examiner's decision to reject independent claims 8 and
15 and dependent claims 21 3, 6-7, 9, 10, 13, 14, 16, 17, and 20-22.
35 USC§ 103 Rejection
Claims 1, 8, and 15
With respect to independent claims 1, 8, and 15, Appellants rely on
the same arguments for patentability for each of the independent claims, and
we find the claims have commensurate limitations. (App. Br. 14--17).
Therefore, we select independent claim 1 as the representative claim and
address Appellants' arguments thereto. 37 C.F.R. § 4I.37(c)(l)(iv).
With respect to representative independent claim 1, Appellants
contend:
The art of record is not seen to disclose or to suggest presenting,
in response to receiving the request, an expanded user interface
element that is expanded in the act of creating an instance of the
data element in a separate frame within the same graphical user
interface layout containing the listing of the at least one data
element, and wherein upon submission of the instance of the data
element to the database table, the expanded user interface
element is closed .... Appellants respectfully submit that simply
confirming input information and moving the input information
from one part of a UI to another, as in Sako, cannot be seen to
disclose or to suggest wherein upon submission of the instance
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of the data element to the database table, the expanded user
interface element is closed, as claimed. As best understood by
Appellants, Sako describes moving one section of the UI to
another section of the UI, and keeping the section visible on the
screen as it moves, via the animation, which cannot be seen to
disclose or to suggest wherein upon submission of the instance
of the data element to the database table, the expanded user
interface element is closed, as claimed. Further, Sako appears to
teach against closing a section on the screen, as movement "is
performed using a sequence of animation. The user is thereby
able to recognize which information is in what position more
easily than the case where information is displayed
instantaneously." See, e.g. para. [0040] of Sako. (Emphasis
added).
(App. Br. 13, 15).
The Examiner finds that Kramer discloses "an expanded user interface
element that is expanded in the act of creating an instance of a data element"
and "wherein the expanded user interface element is in a fixed relationship
with other user interface elements in the [GUI] layout without obscuring the
other user interface elements." (Final Act. 7).
The Examiner finds that while Kramer teaches multiple data elements,
Kramer does not teach the limitation of "creating an instance of the data
element in a separate frame within the same graphical interface layout" and
"wherein upon submission of the instance of the data element to the database
table, the expandable user interface element is closed." (Final Act. 8). The
Examiner relies on Sako as teaching the missing limitations. Specifically,
the Examiner maintains Sako discloses that ''upon pressing of a 'set' button,
the particular window is no longer displayed and the patient information that
is being 'set' is moved to a separate screen." (Ans. 6). The Examiner
concludes "the panels ... are no longer displayed, the patient window has
been closed, and the information has been moved, which is what Examiner
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has combined with the database population and expandable/collapsible
interface in Kramer." (Ans. 6) (citations omitted).
Appellants contend that "Sako does not disclose closing of the patient
information window but instead discloses moving the information window
to a different section of the screen." Further, Appellants contend Sako
shows the window is displayed during the transition and not closed, rather
the window moves across the screen (Animations 1-3) until scaled down
and displayed in region 43. (Reply Br. 2-3).
We are persuaded by Appellants' argument that Sako does not teach
"upon submission of the instance of the data element to the database table,
the expanded interface element is closed." More specifically, the claim
requires "wherein upon submission of the instance of the data element" that,
the same data element instance created in a separate frame in an expanded
user interface element, be closed. The Examiner found that Kramer did not
teach "creating an instance of the data element in a separate frame" or
"wherein upon submission of the instance of the data element to the database
table, the expandable user interface element is closed" and relied on Sako to
show both features. (Final Act. 8). Sako at least appears to show moving a
larger expanded element 41, located in region 31, upon selection of set
button 42, into another region 43, which could be considered a framed area
43. However, element 41 is not closed, per the claim limitation. The claim
requires the same expanded region containing the data instance be closed,
upon submission. Sako does not show element 41 as closed, but rather
scaled and reduced in size. We also disagree with the Examiner's finding
that Sako's panels are closed. (Ans. 6). In contrast, Sako discloses in the
cited portion (i-f 35) that "[t]he input region 31 is a region in which the
display content is switched following screen transition, and is constituted to
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include one or more information input regions." The animation of region 44
into region 31 is a transition, as disclosed, not a closure of the window. As
shown in Fig. 3 and 4A, Sako discloses a left to right movement, upon
selection of the set button 42, of input region 41 which switches via
animation to area 32 and is scaled down into region 43 (i1i136, 40) and 44
into region 31, without closing the element. Therefore, Kramer in view
Sako are not seen as teaching or suggesting the required claimed elements
for all these reasons mentioned herein. Thus, we do not sustain the
Examiner's decision to reject independent claim 1 under 35 U.S.C. § 103(a).
The rejections of independent claims 8 and 15 and dependent claims
2, 6, 7, 9, 13, 14, 16, and 20-22 rely on the same erroneous conclusion by
the Examiner that Sako teaches "wherein upon submission of the instance of
the data element to the database table, the expandable user interface element
is closed," as recited in claim 1. (App. Br. 18). Accordingly, we also do not
sustain the Examiner's rejection of claims 2, 6-9, 13-16, and 20-22 under
35 U.S.C. § 103(a) for the same reasons.
Claims 3, 10, and 17
Appellants contend the rejection of claims 3, 10, and 17 fails to teach
the features of the base claim for the same reasons. (App. Br. 18). The
Examiner finds Kramer, Tanaka, Sako, and Kraft teach the replacement
feature of claims 3, 10, and 17 (Final Act. 16) and maintains the rejection
should be sustained, for the same reasons as claim 1. (Ans. 7). The
rejections of claims 3, 10, and 17 depend from claims 1, 8, and 15, and rely
on the same erroneous conclusion by the Examiner that Sako teaches
"wherein upon submission of the instance of the data element to the database
table, the expandable user interface element is closed," as recited in claim 1
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and the Examiner does not identify how the additional prior art reference
remedies the noted deficiency. (App. Br. 18). Accordingly, we also do not
sustain the Examiner's rejection of claims 3, 10, and 17 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, we reverse the Examiner's decision rejecting
claims 1-3, 6-10, 13-17, and 20-22 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. We also reverse the Examiner's decision
rejecting claims 1, 2, 6-9, 13-16, and 20-22 under 35 U.S.C. § 103(a) as
obvious over Kramer, Tanaka, and Sako and claims 3, 10, and 17 under 35
U.S.C. § 103(a) as obvious over Kramer, Tanaka, Sako, and Kraft.
REVERSED
13
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TINA MARSEILLE, HOLGER DEIST,
CARSTEN SCHMITT, and MARCEL SCHREIER
Appeal2018-002012
Application 13/458,619
Technology Center 2100
Before JOSEPH L. DIXON, JUSTIN BUSCH, and
JOHN D. HAMANN, Administrative Patent Judges.
BUSCH, Administrative Patent Judge, dissenting.
I write separately because I respectfully disagree with the majority's
conclusions of eligibility and non-obviousness in the case. As discussed in
more detail below, I believe the Examiner met the initial burden of
demonstrating ineligibility, properly rejected the claims as ineligible, and
properly rejected the claims as obvious.
THE§ 101 REJECTION
The Examiner concludes claims 1-3, 6-10, 13-17, and 20-22 recite
ineligible subject matter. Final Act. 3-5; Ans. 3-5. Appellants argue the
Examiner has not presented a prima facie case that the claims recite
ineligible subject matter, the claims' are not directed to an abstract idea, and
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the claims' limitations recite significantly more than the abstract idea. App.
Br. 8-11. Appellants argue the § 101 rejection of all claims as a group. See
App. Br. 6-11. Accordingly, my analysis of the§ 101 rejection focuses on
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Alice/Mayo Framework
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that§ 101
"contains an important implicit exception" for laws of nature, natural
phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185
(1981 ). In Mayo and Alice, the Court set forth a two-step analytical
framework for evaluating patent-eligible subject matter: ( 1) "determine
whether the claims at issue are directed to" a patent-ineligible concept, such
as an abstract idea; and, if so, (2) "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Instead of using
a definition of an abstract idea, "the decisional mechanism courts now apply
is to examine earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
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1350, 1353-54 (Fed. Cir. 2016)); accord United States Patent and
Trademark Office, July 2015 Update: Subject Matter Eligibility (July 30,
2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea.").
Step two involves the search for an "inventive concept." Alice, 134
S. Ct. at 2355; Elec. Power, 830 F.3d at 1353. For an inventive concept,
"more is required than 'well-understood, routine, conventional activity
already engaged in"' by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79-80).
Prima Facie Case
Appellants argue the Examiner has not established a prima facie case
of ineligibility. App. Br. 8. Appellants cite various case law and generally
assert the Examiner overgeneralized and oversimplified their claims and
identified an abstract idea "at a high level of abstraction untethered from the
specific and extensive language" in the claims. App. Br. 8 ( emphasis
omitted). Appellants also argue the claims in the cases the Examiner
identified do not "uniquely match" their claims and, therefore, the Examiner
should not have relied on those cases. App. Br. 8.
The Federal Circuit has repeatedly noted that "the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the U.S. Patent and Trademark Office (USPTO) carries its
procedural burden of establishing a prima facie case when its rejection
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satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.").
The Examiner's rejection, as discussed further below, satisfies the
initial burden of production by identifying that Appellants' claims are
directed to "a method that enters form data into a list from a separate input
window from the list," which has particular underlying concepts ( e.g.,
"analyzes raw data, organizes said data, and displays the organized data")
that the Examiner determines are similar to other abstract ideas found
abstract by the Federal Circuit (e.g., "collecting information, analyzing it,
and displaying certain results of the collection and analysis"), and further
explaining why the additional elements (i.e., "the computing system, the
graphical user interface, and the database tables") do not amount to
significantly more than the abstract idea. See Final Act. 3-5; Ans. 3-5.
Accordingly, the Examiner identified 35 U.S.C. § 101 as the statutory basis
for the rejection and, contrary to Appellants' contentions, explained and
analyzed the rejection in sufficient detail to permit Appellants to respond
meaningfully. See Jung, 637 F.3d at 1362.
Furthermore, as discussed above, and contrary to Appellants'
argument that the facts must "uniquely match," App. Br. 8, our reviewing
court instructs us that the proper analysis involves comparing the claims at
issue to similar concepts previously reviewed and attempting to identify the
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closest matches, not only cases having uniquely matching facts. See
Amdocs, 841 F.3d at 1294.
Step One of Alice Framework
The Examiner determines the focus of the claims is on the concept of
analyzing raw data, organizing the data, and displaying the organized data,
which the Examiner concludes is an abstract idea because it is similar to the
concept of collecting information, analyzing the information, and displaying
results of the analysis, which the Federal Circuit found to be an abstract idea.
Final Act. 3--4 (citing Elec. Power, 830 F.3d. at 1351, 1356); Ans. 3--4. The
Examiner also concludes the claims are directed to other concepts courts
have found abstract. Final Act. 4 ( citing Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015); Intellectual Ventures I LLC
v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015)).
Appellants contend the claims focus on a specific technological
improvement. App. Br. 8. Specifically, Appellants assert the claims
improve a technology because the claims create "an expanded user interface
element in place, without a user being directed, re-directed, or otherwise
navigated to a different floorplan or context; expanding the user interface
without obscuring or otherwise covering or hiding any of the other user
interface elements of the floorplan." App. Br. 9-10.
Claim 1 is a method claim that effectively recites three method steps.
In particular, claim 1 essentially recites the steps of: (1) receiving via a
graphical user interface (GUI) a request to create an instance of a data
element; (2) in response to receiving the request, presenting an "expanded
user interface element"; and (3) closing the expanded user interface (UI)
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element "upon submission of the instance of the data element." 5 Claim 1
recites that the method is "implemented by a computing system."
Claim 1 also recites various arrangements and relationships of the
GUI elements. More specifically, claim 1 recites the system receives the
request via a GUI layout that lists the data element the user selects
(hereinafter "the GUI layout") and the data element is a business object
metadata model data structure that: (1) has at least one attribute field
described by metadata; (2) represents specific data; (3) defines a relationship
between database tables; (4) and provides a mapping to the underlying table
storing the specific data. Claim 1 further recites the expanded UI element is:
(1) "expanded in the act of creating an instance of the data element"; (2)
expanded in a separate frame within the GUI layout while in a fixed
relationship with, and not obscuring, other UI elements in the GUI layout;
and (3) includes at least some minimum number (the number corresponding
to a minimum number of attributes of the object of which an instance is
created) of UI "input fields to receive values to specify the at least one
attribute field of the business object."
I agree with the Examiner's characterization of claim 1. Claim 1 is
directed to a method with three steps of receiving a request to create an
instance of a data element through a GUI, presenting an expanded UI
element in response to receiving the request, and closing the expanded UI
element in response to submission of the created instance of the data
element. Claim 1 further describes certain required content in the expanded
5 For purposes of this Dissent, I treat claim 1 's recitation of "wherein upon
submission of the instance of the data element to the database table, the
expanded user interface element is closed" to affirmatively require closing
the expanded user interface element in response to submitting user-entered
data to create an instance of the recited data element.
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UI element and the arrangement and relationship of various UI elements in
the claimed GUI. Claim 1 also recites certain relationships between the data
element and both user input fields in the expanded UI element and tables
storing values affiliated with data fields of the instance(s) of the data
element. For purposes of this Dissent, I do not treat the database object and
its variously recited relationships and content as merely non-functional
descriptive material. Nevertheless, even considering every aspect of the
claim as limiting, that does not change the focus of the claims or their
character as a whole, which is collecting information (the creation and
submission of an instance of a data element) and organizing and displaying
information (the GUI, its layout, and its content) or, alternatively, presenting
information in a particular layout of a graphical user interface. See Ans. 3
("the claim language is directed to presenting an interface with a form and a
list, where the form can be populated and then inserted into the list").
In Electric Power, the Federal Circuit concluded claims that
essentially recited "collecting information, analyzing it, and displaying
certain results of the collection and analysis" were directed to an abstract
idea. See Final Act. 3--4 (citing Elec. Power, 830 F.3d at 1353-54); see also
Final Act. 4 (citing Internet Patents, 790 F.3d at 1348 (retaining information
in navigation of online forms is an abstract idea); see also Digitech Image
Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014) (concluding "taking existing information ... and organizing this
information into a new form" is an abstract idea); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1345,
1347 (Fed. Cir. 2014) (collecting, recognizing, and storing information is an
abstract idea).
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I disagree with Appellants' assertion that the claims are directed to a
technological improvement. See App. Br. 9--10. Appellants summarize the
alleged improvement as creating a UI element without changing the
"floorplan" or context and generally conclude that Appellants' claims,
therefore, improve a technology, but Appellants provide insufficient
evidence or explanation how or why claim 1 is a technological improvement.
On the contrary, Appellants' alleged benefits appear to just claim a
particular arrangement of UI elements and navigation of a GUI. Claim 1 is
not directed to "an improvement in computers as tools," like those claims
found patent-eligible. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016). Rather, claim 1 invokes computers merely as a tool
to implement an abstract idea for presenting information in a particular way.
See BSG Tech LLC v. BuySeasons, Inc., No. 2017-1980, 2018 WL 3862646,
at *5 (Fed. Cir. Aug. 15, 2018) (disagreeing with BSG "that its claims focus
on a non-abstract improvement in database functionality" by improving the
quality and organization of information in the database because the recited
benefits "are not improvements to database functionality" but instead are
"benefits that flow from performing an abstract idea in conjunction with a
well-known database structure"). Analogous to the claims in BSG, claim 1
does not relate to how GUis function, but how conventional GUis are used
to organize and present information in a way that allegedly improves process
of creating instances of data elements. See BSG, 2018 WL 3 862646, at * 5.
In fact, Appellants' claims are very similar to the claims found
abstract in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). In
Apple, the Federal Circuit found claims directed to a GUI that allowed a user
to select items from a first set of menus and facilitated generating a second
menu (i.e., claims focused on particular relationships between UI elements
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and stored data and creating new UI elements from existing UI elements)
were abstract ideas because "[ t ]hey do not claim a particular way of
programming or designing the software to create menus that have these
features, but instead merely claim the resulting systems." Apple, 842 F.3d at
1241 (emphases added). The Court further stated that, "[e]ssentially, the
claims are directed to certain functionality-here, the ability to generate
menus with certain features," not "to a specific improvement in the way
computers operate." Apple, 842 F.3d at 1241.
I recognize the Federal Circuit more recently determined claims
relating to particular operations that improve upon existing interface systems
were not directed to an abstract idea. Core Wireless Licensing S.A.R.L. v.
LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). In that case, the Court
focused on the fact that the claims recited "an application summary window
that can be reached directly from the main menu ... while the application is
in an un-launched state." Core Wireless, 880 F.3d at 1360 (reproducing the
claim to demonstrate emphasis on what the Court presumably found
important for purposes of further discussion). The Court determined the
claims were "directed to an improved user interface for computing devices,"
reiterating the emphasized portions of the claims and stating that the
"limitations disclose a specific manner of displaying a limited set of
information to the user, rather than using conventional user interface
methods to display a generic index on a computer." Core Wireless, 880 F.3d
at 1362---63 (emphases added). Unlike the claims in Core Wireless, there is
no evidence or argument suggesting that expanding and closing the
expanded UI element is anything other than implementing conventional user
interface methods while reciting a particular arrangement of UI elements and
executing the expansion and closing in response to particular user input.
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Although claim 1 has certain similarities to claims in both Apple and
Core Wireless, I believe claim 1 is more similar to the claims in Apple.
Accordingly, I agree with the Examiner that claim 1 is directed to an abstract
idea and tum to step 2 of the Alice analysis.
Step Two of Alice Framework
Next, I consider whether the additional limitations, when considered
both "individually and 'as an ordered combination"' contain an "inventive
concept" sufficient to transform the claimed "abstract idea" into a patent-
eligible application. Alice, 134 S. Ct. at 2355-58.
The Examiner concludes that the additional elements in claim 1 are
not rooted in computer technology to overcome problems specifically arising
in the realm of GUis. Final Act. 4; Ans. 5. The Examiner also concludes
Appellants' "additional elements (i.e., the computing system, the graphical
user interface, and the database tables) ... are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions." Final Act. 4.
The Examiner explains that "[p ]opulating a generic database is a well-
understood, routine, and conventional activity in the art," "filling out of
forms and the saving of forms is a well-understood, routine, and
conventional activity in the GUI art," and "[a]n expandable/collapsible
interface that saves information to a database could not be more
conventional." Final Act. 4; Ans. 4--5.
Appellants assert the Examiner has not sufficiently demonstrated the
additional elements fail to provide significantly more than the abstract idea
itself. App. Br. 10 (citing Bascom Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Other than a bare
conclusion that the ordered combination of the claimed features is not well-
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known, Appellants' only argument that the claims recite significantly more
is that the claims do not pre-empt "the alleged abstract idea of 'analyzing
raw data, organizing said data and displaying the organized data."' App.
Br. 10-11.
An inventive concept "cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Alice, 134
S. Ct. at 2355 (explaining that, after determining a claim is directed to a
judicial exception, "we then ask, ' [ w J hat else is there in the claims before
us?"' (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at
78)). Instead, an "inventive concept" is furnished by an element or
combination of elements that is recited in the claim in addition to the judicial
exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice Corp., 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73); see BSG, 2018 WL 3862646, at *7
( explaining that the Supreme Court in Alice "only assessed whether the
claim limitations other than the invention's use of the ineligible concept to
which it was directed were well-understood, routine and conventional"
( emphasis added)). On the other hand, "[i]f a claim's only 'inventive
concept' is the application of an abstract idea using conventional and well-
understood techniques, the claim has not been transformed into a patent-
eligible application of an abstract idea." BSG, 2018 WL 3862646, at *7
(citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t
is irrelevant whether [the claimed abstract idea] may have been non-routine
or unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG, 2018 WL
3862646, at *7.
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I agree with the Examiner that claim 1 recites the routine use of
conventional computer components to perform the recited method steps that
constitute the abstract idea. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible."); see also Intellectual Ventures, 792 F.3d at 1370
("[O]ur precedent is clear that merely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea."); Alice, 134 S. Ct. at 2358-59.
Again, even treating every limitation related to the recited database
object as limiting, I agree with the Examiner that Appellants' claims do not
recite significantly more than the abstract idea itself. Notably, the claims
recite only well-known, routine, and conventional computing system, GUI
elements, and database tables. Appellants' conclusory assertion to the
contrary-i.e., that the combination of claimed features is not well-known-
is unpersuasive. Appellants provide insufficient persuasive evidence or
explanation how or why claim 1 improves GUis or another technology or
otherwise adds significantly more to the abstract idea as opposed to merely
implementing a GUI with a particular visual arrangement and causal
relationships to particular user input, which are all aspects of the abstract
idea itself and not additional limitations.
Accordingly, the claimed limitations, considered both individually
and together, do not add significantly more to the abstract idea and,
therefore, do not confine the abstract idea in a way that renders the subject
matter patent eligible.
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Summary
For the above reasons, I am not persuaded the Examiner erred in
rejecting claims 1-3, 6-10, 13-17, and 20-22 under 35 U.S.C. § 101 as
ineligible and I would affirm this rejection.
THE § 103 REJECTIONS
Claims 1-3, 6-10, 13-17, and 20-22
The Examiner rejects claims 1, 2, 6-9, 13-16, and 20-22 as obvious
in view of Kramer, Tanaka, and Sako and claims 3, 10, and 17 as obvious in
view of Kramer, Tanaka, Sako, and Kraft. App. Br. 5-18. Appellants do
not separately argue any dependent claims. See App. Br. 5-18; Reply Br. 2-
3. Furthermore, Appellants rely on the same arguments for patentability for
each of the independent claims, and the claims have commensurate
limitations. See App. Br. 14--17. Therefore, in this Dissent, I address
Appellants' argument only with respect to independent claim 1.
Of particular relevance to Appellants' arguments, the Examiner finds
"Kramer explicitly teaches an interface that can be expanded and collapsed,
with form data capable of being entered and stored in a database" and
"Kramer allows for the expandable user interface element to be closed or
opened." Ans. 6; see Final Act. 7 ("user can enter data into forms that are
expandable/collapsible in the interface.") The Examiner then finds Kramer
does not teach closing an expandable UI element in response to submitting
the instance of the data element and explains, therefore, that "Sako has been
combined with Kramer." Ans. 6.
The Examiner finds Sako teaches the aspect of the claims relating to
presenting a UI element "in a separate frame" of the GUI and "upon
submission of the instance of the data element to the database table, the
expanded user interface element is closed." Final Act. 8. Specifically, the
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Examiner finds Sako discloses "patient info can be moved upon pressing the
'set' button and inserted into a list on the separate screen." Final Act. 8; see
Ans. 6. The Examiner explains that Sako's "panels ... are no longer
displayed, the patient window has been closed, and the information has been
moved, which is what Examiner has combined with the database population
and expandable/collapsible interface in Kramer." Ans. 6 ( citations omitted).
Appellants argue Sako' s moving of patient information "does not
disclose closing of the [patient] information window, but instead describes
moving the [patient] information window to a different section of the
screen." Reply Br. 2. Appellants, the Examiner, the majority, and I all
appear to agree that Sako discloses a patient information window in which a
user may enter patient information and, upon the user clicking the "set"
button, Sako displays an animation that scales down the patient information
window and moves the window from its initial location in the patient
information input region to its ultimate location in the patient information
display region. Sako ,r,r 36, 38, Fig. 4. Sako further discloses that, after
moving from the input-enabled region (i.e., the patient information input
region) to the input-disabled region (i.e, the patient information display
region), the patient information attributes are "in a protected state, with input
being disabled." Sako ,r 37.
First, I note claim 1 does not recite closing a particular window, but
merely recites that the "expanded user interface element is closed" upon
submitting the instance. Sako explicitly discloses the patient information
window is "scaled down" before it is displayed in the patient information
display region, which suggests the non-scaled down version was
"expanded." For that reason alone, I believe a person of ordinary skill in the
art would have understood Sako to teach, or at least suggest, closing the
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expanded UI element because the UI element is now contracted as compared
to its expanded state prior to the move.
Claim 1 further recites the expanded UI element includes "user
interface input fields to receive values." Therefore, based on the fact Sako' s
window is input-disabled after moving, I believe a person of ordinary skill in
the art would have understood Sako to teach, or at least suggest, closing the
expanded UI element, which includes UI input fields. That is, the particular
element that was expanded to allow user input is no longer expanded with
input fields.
Therefore, I do not believe the Examiner erred in determining Sako
teaches, or at least suggests presenting a UI element "in a separate frame" of
the GUI and "upon submission of the instance of the data element to the
database table, the expanded user interface element is closed." Based on the
arguments and evidence before us, I agree with the Examiner's conclusion
that the claims would have been obvious.
CONCLUSION
I would affirm the Examiner's decision to reject claims 1-3, 6-10,
13-17, and 20-22 under 35 U.S.C. §§ 101 and 103.
15