Ex Parte Morinville

Patent Trials and Appeals Board

Apr 4, 2019

12014887 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/014,887 01/16/2008 Paul V. Morinville
38844 7590 04/08/2019
Loveless Law Group, PLLC
4760 Preston Road
Ste 244-357
Frisco, TX 75034
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.
IBIGll00-10 1374
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/08/2019 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):
eofficeaction@appcoll.com
ryan@lovelesslawgroup.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL V. MORINVILLE
Appeal2017-004427 1
Application 12/014,8872
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL W. KIM, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Paul V. Morinville (Appellant) seeks our review under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-7 and 15-27,
which are all the claims pending in the application. We have jurisdiction
under35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellant's Appeal Brief ("Appeal Br.," filed
Aug. 9, 2016), Reply Brief ("Reply Br.," filed Jan. 24, 2017), the
Examiner's Answer ("Ans.,"mailed Dec. 14, 2016), and the Final Office
Action ("Final Act.," mailed Mar. 9, 2016).
2 Appellant identifies "Paul V. Morinville" as the real party in interest.
Appeal Br. 4.
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Application 12/014,887
STATEMENT OF THE CASE
Claimed Invention
Appellant's "invention relates generally to systems and methods for
automating business processes, and more specifically to systems and
methods for providing automated signature looping using role-based user
access and approver identification." Spec. ,r 2.
Method claim 1, system claim 15, and computer-readable medium
claim 21 are the independent claims on appeal, and recite substantially
similar subject matter. See Appeal Br., Claims Appendix. Claim 1,
reproduced below with added formatting and bracketed matter, is illustrative
of the subject matter on appeal.
1. A method implemented in a computer, the method
compnsmg:
[(a)] providing to a computer a plurality of business
information items;
[ (b)] def ming in the computer a hierarchical content
structure of the business information items;
[ ( c)] the computer associating access rights for a first
role with a frrst one of the business information items;
[ ( d)] the computer automatically enabling access by the
frrst role to the frrst one of the business information items and
business information items below the frrst one of the business
information items in the hierarchical content structure.
Appeal Br. 30, Claims Appendix.
Rejections
The following rejections are before us for review.
I. Claims 1-7 and 15-27 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 5.
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II. Claims 1-7and15-27arerejectedunder35U.S.C. § 102(b)as
being anticipated by Gupta (US 6,516,315 B 1, iss. Feb. 4,
2003). Id. at 7.
III. Claims 1-7 and 15-27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gupta and Pajak et al. (US 5,388,196, iss.
Feb. 7, 1995) ("Pajak"). Id. at 10.
ANALYSIS
Rejection!
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 3 5 U.S. C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g.,AliceCorp. v. CLSBanklnt'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at217-18 (citing Mayo CollaborativeServs. v. Prometheus
Labs., Inc., 566U.S. 66, 75-77 (2012)). Inaccordancewiththat framework,
we frrst determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593,611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubberproducts"(Diamondv. Diehr,450U.S. 175,191
(1981)); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n. 7 (quoting Corningv. Burden, 56 U.S.
252, 267---68 (1853))); andmanufacturingflour (Benson, 409U.S. at69
(citing Cochranev. Deener, 94 U.S. 780, 785 (1876))).
In Di ehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that"[ a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr,450U.S. at 176;see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson andFlook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step oftheAlice andMayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "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. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we also
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP §2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
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In rejecting claims 1-7 and 15-27 under 35 U.S.C. § 101, under step
one of the Alice framework, the Examiner determines the claims "are
directed to the abstract idea of providing business items, associating access
rights for a role with the business items and enabling access to the business
item." Final Act. 5---6. According to the Examiner, "the claimed process of
allowing a user based on a credential to access a data item is directed
towards a process of organizing human activity, for example it is well
known in military organizations [to] classify data according to whether it is
sensitive (e.g. top secret) and allowing access only to people with the proper
credentials." Id. at 6.
Although Appellant acknowledges it is "well known that classification
of sensitive military information is handled on an item-by-item basis, and
that access to each item is based on the classification for that particular item"
(Appeal Br. 12), Appellant nevertheless argues "it is not well known to
automatically allow access to an entire hierarchy of sensitive items based on
access to a single item in a hierarchical content structure." Id. at 13-14.
This argument is unpersuasive of error because the Examiner's
characterization of the abstract idea under step one of Alice explicitly
excludes the recited computer and computer automation.
Appellant's invention relates to "[s]ystems and methods for
automating and increasing the efficiency of business processes using a
hierarchical content structure." Abstract. According to Appellant, "[ m Jost
business processes are manual, paper-based systems. Some are managed in
software applications." Spec. ,r 6. "Applications typically secure
information by controlling access, which is done by setting up accounts and
then manually entering (typing in) employee information (e.g., names). The
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applications also control business processes by assigning certain employees
to approve certain business processes. Again, this information is manually
entered." Id. "When an employee is hired, promoted, transferred or leaves
the company, a cascade of manual changes must be made in every affected
application." Id. ,r 7 ("Similar changes must be made when the company
modifies its business processes or the responsibilities of people within the
company."). "This can delay management access to critical information by
days or weeks and often yields erroneous information." Id. ,r 8.
If management fmds it necessary to change a specific business
process, the people who can access the business process, or the
people who approve the process can be changed. This is
normally done through e-mails, meetings, and phone calls to
functional and departmental heads who determine which
employees should be added or deleted from the access and
authorization rolls.
Id. ,r 9 ("This process can take weeks.").
To overcome such inefficiencies associated with poor business
process management, Appellant solved these problems by
automating and increasing the efficiency of business processes
using a role structure which is preferentially hierarchical. The
hierarchical role structure defmes a plurality of roles within
several hierarchical levels. Various rights (e.g., access rights or
authorization rights) are associated with the different roles or
levels to enable positions which are associated with the roles to
have access to particular business processes (e.g., purchasing or
hiring). In this way, access rights can be administered across
more than one position at a time, and can be consistently
applied across equivalent or similar positions. . . The
hierarchical role structure can also be used in conjunction with
a hierarchical content structure to enable employees having
different roles within the organization to access different
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information, based upon rights which are associated with those
roles.
Id. ,r 19.
Representative claim 1 reflects this professed solution by reciting the
following four steps: (a) "providing ... a plurality of business information
items," (b) "defining ... a hierarchical content structure of the business
information items," ( c) "associating access rights for a first role with a frrst
one of the business information items," and ( d) "enabling access by the frrst
role to the frrst one of the business information items and business
information items below the frrst one of the business information items in
the hierarchical content structure." These limitations under the broadest
reasonable interpretation, recite assigning access rights to a user because the
limitations recite operations that would ordinarily take place in granting
permissions for controlling access to information.
For example, providing information items in step (a) is mere data
gathering which courts have found to be insignificant extra-solution activity.
See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajfd sub
nomBilskiv. Kappas, 561 U.S. 593 (2010)(characterizingdatagathering
steps as insignificant extra-solution activity). Courts have found selecting a
particular data source or type to be manipulated, as recited in step (b ), is also
insignificant extra-solution activity. See, e.g., Intellectual VenturesILLC v.
Erie Indeni. Co., 850 F.3d 1315, 1328----29 (Fed. Cir. 2017) (using XNIL tags
to form an index dee1ned token extra-solution activity); 1v1PEP § 2106. 05(g).
What remains of claim 1 are steps ( c) and ( d): associating access rights for a
frrst role with an information item, and enabling access by the frrst role to
the information item and items below that in the hierarchical content
structure-which involves managing personal behavior by following rules
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and instructions based upon rights of access associated with a role (see Spec.
,r 19 supra). Specifically, a right, in this instance, is no more than a rule or
instruction as to who is or is not permitted access to certain information
based on access to other information. Some examples include security
clearances, where a particular level of clearance provides an individual with
access beyond the narrow area to which access was originally sought. See
also Affinity Labs a/Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (as claimed, "[t]he concept of providing out-of-region
access to regional broadcast content is an abstract idea, as that term is used
in the section 101 context."). Managing personal behavior by following
rules and instructions is one of certain methods of organizing human
activity, and, thus, an abstract idea. See Guidance at 52.
We agree with the Examiner that " [ t ]he recitation of the computer
limitations amounts to mere instructions to implement the abstract idea on a
computer." FinalAct. 6. In view of Appellant's Specification discussed
above, and consistent with the Examiner's determinations, we conclude that
claim 1 does not integrate the judicial exception into a practical application.
We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
( v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.05(a}-(c), (e}-(h); see also Guidance at 55. In
particular, as set forth above in paragraph 19 of the Specification, the
identified problem and solution both involve business processes, which is
not an improvement to the functioning of a computer, technology, or
technical field. Thus, we determine that claim 1 is directed to a judicial
exception. Independent claims 15 and 21 recite substantially the same
concept but do so in the context of a system 3 and computer-readable
medium, respectively. As the Supreme Court has explained, the form of the
claims should not always trump basic issues ofpatentability. See Flook, 437
U.S. at 5 93 ( advising against a rigid reading of § 101 that "would make the
determination of patentable subject matter depend simply on the draftsman's
art and would ill serve the principles underlying the prohibition against
patents for 'ideas' or phenomena of nature.").
Although claims 1, 15, and 21 recite "more" under step two of the
Alice framework, we conclude the recitation of "a computer," "a processor,"
or "a non-transitory computer-readable medium" are not significantly more.
Rather, these components represent the epitome of a well-understood,
routine, conventional element/ combination previously known in the
industry. See Alice, 573 U.S. at227 ("[P]etitioner's ... media claims add
nothing of substance to the underlying abstract idea."); Fair Warning IP, Inc.
v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("Claims 15-17 ...
add nothing more than similar nominal recitations of basic computer
3 We disagree with the Examiner's additional characterization of claims 15-
20 as "software per se" (Final Act. 6) because the broadest reasonable
interpretation of "a business processor engine" ( Claim 15) includes a
processor, which is a machine. See Spec. ,r 103, Figure 3.
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hardware, such as 'a non-transitory computer-readable medium with
computer-executable instructions' and a microprocessor.").
Because these claims, in addition to the judicial exception, recites
only a well-understood, routine, conventional element/ combination
previously known in the industry, we conclude there is no genuine issue of
material fact regarding step two of the Examiner's Alice analysis. Therefore,
in view of Appellant's Specification, and consistent with the Examiner's
determinations, we conclude the claims do not recite:
( vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confme the claim to a
particular useful application.
See MPEP § 2106. 05( d); see also Guidance at 56.
We have considered Appellant's contention as to the dependent
claims, but we are not persuaded that these claims add anything significantly
more to transform the abstract idea. For example, Appellant argues claims
18 and 19
include limitations as to determining the user's position based
on login information, enabling the user's access to business
information items according to a role associated with the user's
position, and dynamically building pages containing accessible
business information items based on the user's position ...
[because] these interactions with the user are not merely generic
computer functions, but instead amount to significantly more
than the abstract idea alleged by the Examiner.
Appeal Br. 16. We disagree because the dependent claims may limit the
scope of the abstract idea to which the independent claims are directed, but
their character remains unchanged, especially given that these dependent
claims provide no insight to improvements in computer functionality beyond
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what one would expect from using a generic computer as a tool in
performing the judicial exception. Accordingly, we are not apprised of error
and, thus, we sustain the rejection of the dependent claims.
In view of the foregoing, we sustain the Examiner's rejection of
claims 1-7 and 15-27under 35 U.S.C. § 101.
Rejection!!
We are not persuaded by Appellant's arguments (Appeal Br. 19-21)
that Gupta, on which the Examiner relies, does not disclose "automatically
enabling access by the first role to the frrst one of the business information
items and business information items below the frrst one of the business
information items in the hierarchical content structure," as recited in
independent claims 1, 15, and 21. In support of this limitation, Appellant
directs us to paragraph49 of the Specification (id. at 8), which discloses that
"access rights to business processes are inherited from one level of the
hierarchy to another. A particular function has the access rights assigned to
that function, as well as access rights to any function about it in the
hierarchy."
Gupta describes "a method for controlling access to information on a
computer system, being accessible to a plurality of users." Gupta3:20-23.
Each user of the system can have a plurality of relationships to
each data object of information. When the user asks for
information about the data object, the system determines each
relationship between the user and the data object and
determines the security classification for each relationship.
Finally, the system then grants the user access to the data object
if one of the security classifications for all the relationships is
equal to or greater than the security classification of the data
object, or denies the user access to the data object if all the
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security classifications are less than the security classification
of the data object. The security classifications can also have a
hierarchical structure.
Id. at 3:23-3:35.
Appellant argues that "Gupta teaches that when access is
granted to a frrst data object in a hierarchical structure, access is not
automatically granted to data objects that are below the frrst data
object in the hierarchical structure." Reply Br. 6. We disagree.
Gupta discloses that "[r ]elationships between subjects and objects
form the basis of granting subjects access to their related objects."
Gupta 6:3-5. According to Gupta, parent-child object relationships
establish folders. Id. at 6:7. "Securing the master instance in a folder
preferably secures all the owned folder instances. For example, if
access to a patient's instance is denied, access to the patient's
treatment instances is automatically denied without requiring any
further security specification." Id. at6:19-23. Further, Gupta
discloses:
Security classification labels can be linked and can be
formed in a hierarchical structure. A security classification
label A may have a parent label B, so that granting access to A
automatically grants access to Band all antecedents ofB. The
labels towards the root 42 of the hierarchy are for less sensitive
information and have a lower security rank, whereas labels
towards the leaf 44 are more sensitive and have a higher
security rank. When a subject is provided access to a more
sensitive label, they also have access to the less sensitive labels
that are its antecedents.
Gupta 6:50----60; see also Gupta Figure 2. Although Appellant
characterizes the physical positioning of the hierarchical content in
Gupta as not being below one another (Appeal Br. 20-21 ( citing
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Gupta Fig. 1) ), we see no distinction because as described above,
Gupta automatically grants access to B and all antecedents of B in its
hierarchical structure, and can automatically grant subjects access to
related objects in a parent-child folder/subfolder hierarchy.
Therefore, we sustain the rejection under 35 U.S. C. § 102(b) as
anticipated by Gupta.
Rejection III
We affrrmed the rejection of claims 1-7 and 15-27 as anticipated by
Gupta. Consequently, we fmd it unnecessary to reach a decision about the
cumulative rejection of claims 1-7 and 15-27 under Gupta and Pajak, which
encompasses the same claims (see MPEP 706.02-Prior art rejections should
ordinarily be confmed strictly to the best available art). See 37 C.F.R.
§ 41. 5 0( a)( 1) ("The affrrmance of the rejection of a claim on any of the
grounds specified constitutes a general affrrmance of the decision of the
examiner on that claim .... ").
Thus, we vacate the Examiner's 35 U.S.C. § 103(a) rejection of over
Gupta and Pajak (see Ex parte Gutsch, 2009 WL 1899607 (BP AI 2009)
(nonprecedential) (vacating cumulative rejections).
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DECISION
Rejection I of claims 1-7 and 15-27under35 U.S.C. § 101 is
affirmed.
Rejection II of claims 1-7 and 15-27under35 U.S.C. § 102(b)is
affrrmed.
Rejection III of claims 1-7 and 15-27under35 U.S.C. § 103(a) is
vacated.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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