Ex Parte Olsen et al

Patent Trial and Appeal Board

Dec 4, 2018

13842035 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/842,035 03/15/2013 Greg Olsen
22442 7590 12/07/2018
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
UNITED ST A TES OF AMERICA
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.
8982-1-2 1331
EXAMINER
AN,IGTAI
ART UNIT PAPER NUMBER
4112
NOTIFICATION DATE DELIVERY MODE
12/07/2018 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG OLSEN, GANESH BELL, RICARDO CRAFT,
CHELLAH THIRUNA VUKKARASU, LENIN SUBRAMANIAN,
MANOHAR RAGHUNATH, and ZHENG CHEN
Appeal2017-008993
Application 13/842,035 1
Technology Center 3600
Before LARRY J. HUME, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-18 and 20. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, ServiceSource International, Inc. is the real party
in interest. App. Br. 2.
2 Claim 19 is canceled. App. Br. 35.
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Application 13/842,035
INVENTION
The invention is directed to processing and managing recurring
revenue asset information. Spec. ,r 1. Claim 1 is illustrative of the invention
and is reproduced below:
1. A computer program product comprising a non-
transitory machine-readable medium storing instructions that,
when executed by at least one programmable processor, cause
the at least one programmable processor to perform operations
compnsmg:
receiving a first unit of data at a recurring revenue
management system;
receiving a second unit of data at the recurring revenue
management system;
extracting content from the first unit of data and the second
unit of data based on one or more parameters of a predefined data
object that is part of an asset data model defined in the recurring
revenue management system;
adding the extracted content to an instance of the
predefined data object and associating reference tags with the
content extracted from each of the first unit of data and the
second unit of data, each reference tag comprising identification
information for its associated content, wherein the identification
information of each reference tag comprises an indication of a
source from which the associated extracted content was received,
the identification information further comprising a tag history
including a history of previous reference tags that have been
associated with the extracted content with which the reference
tag is associated, the tag history configured to provide the history
and source of origin of all changes to the associated extracted
content;
detecting a duplicate data condition in which the content
extracted from the first unit of data and the content extracted
from the second unit of data provide redundant, conflicting
values for a same field within the instance of the data object; and
resolving the duplicate data condition by applying a
predefined approach to conflict resolution that is based on the
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identification information in the reference tags of the content of
the first unit of data and the second unit of data.
REJECTIONS AT ISSUE3,4
Claims 1-18 and 20 stand rejected under 35 U.S.C. § 101 as being
directed to a patent-ineligible subject matter. Ans. 2-5.
Claims 1-18 and 20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Gotz (US 2004/0034699 Al;
published Feb. 19, 2004) and Caballero (US 2008/0270256 Al; published
Oct. 30, 2008). Ans. 5-9.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
3 The Examiner rejects claims 1-20 under 35 U.S.C. § 101 in the Final
Rejection, but rejects claims 1-18 and 20 under 35 U.S.C. § 101 in the
Answer. Compare Final Act. 3 with Ans. 2. Claim 19 has been canceled.
App. Br. 35. We, therefore, interpret the Final Rejection pertaining to the
rejection of claims 1-20 under 35 U.S.C. § 101 as a typographical error and,
instead, interpret the 35 U.S.C. § 101 rejection as stated in the Answer.
4 The Examiner rejects claims 1-18 under 35 U.S.C. § 103 in the heading of
the rejection in the Final Rejection, but includes an analysis for claims 1-20
in the body of the rejection. Compare Final Act. 6 with id. at 7-10.
Moreover, the Examiner rejects claims 1-18 and 20 under 35 U.S.C. § 103
in the heading of the Answer, but includes an analysis for claims 1-20 in the
body of the rejection. Compare Ans. with id. at 6-9. However, claim 19
has been canceled. App. Br. 35. We, therefore, interpret the Examiner's
rejection under 35 U.S.C. § 103 as a typographical error and, instead,
interpret the 35 U.S.C. § 103 rejection as rejecting claims 1-18 and 20.
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ANALYSIS
35 us.c. § 101
The Examiner concludes the present claims are directed to an abstract
idea similar to the abstract idea in Electric Power Grp, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir, 2016). Ans. 11. Furthermore, the Examiner
concludes the additional elements do not amount to significantly more than
the abstract idea because they recite generic components that perform
generic functions that are well understood, routine, and conventional. Id.
at 4.
Appellants argue the Examiner fails to present a prima facie case of
patent ineligibility by impermissibly relying on conclusory statements that
the present claims are abstract and therefore did not meet the Examiner's
burden. App. Br. 13-16. Appellants argue the present claims are not
abstract because, like Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016), there are improvements to the function of computers such as
detecting and resolving duplicate data and allowing for the tracking and
capturing of data provenance. App. Br. 16-18.
Appellants argue that, similar to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) and BASCOM Global Internet Serv.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present
claims amount to significantly more than any abstract idea because they
recite a non-conventional, non-generic, and specifically ordered arrangement
of elements. App. Br. 19-22. Appellants argue the present claims are patent
eligible because they do not preempt any abstract idea. App. Br. 23-26.
Appellants argue the propriety of the Examiner's new findings and
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conclusions pertaining to Electric Power and argue that they do not have an
opportunity to respond. Reply Br. 5-6. We disagree with Appellants.
Legal Standards
Regarding Appellants' argument that the Examiner did not present a
primafacie case of patent ineligibility (App. Br. 13-16), patent eligibility
under 35 U.S.C. § 101 is a question of law that is reviewable de nova. See
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). We are
aware of no controlling authority that requires the Examiner to provide
factual evidence under step one of the Alice framework to support a
determination that a claim is directed to an abstract idea. 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 Examiner satisfies the burden of
establishing aprimafacie case under 35 U.S.C. § 132 by setting forth a
rejection in a sufficiently articulate and informative manner. In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s]
the shortcomings ... the burden shifts to the applicant to rebut the prima
facie case with evidence and/or argument." Hyatt, 492 F.3d at 1370. The
Final Office Action adequately explains the § 101 rejection. See Final
Act. 7-8. The Examiner's statements satisfy§ 132(a) because they apply
the Alice analytical framework and apprise Appellants of the reasons for the
§ 101 rejection under that framework. Appellants have not responded by
alleging a failure to understand the rejection. To the contrary, Appellants
clearly identify the abstract idea. See, e.g., App. Br. 15-19.
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Following the decision in Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134
S. Ct. 2347 (2014), (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we analyze claims where the
abstract idea judicial exception to the categories of statutory subject matter is
at issue using the following two-part analysis set forth in Mayo:
1) determine whether the claim is directed to an abstract idea; and 2) if an
abstract idea is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices5; certain
methods of organizing human activities6; "[a]n idea ofitself'7 ; and,
mathematical relationships or formulas. 8 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
5 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
6 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski v. Kappas, 561 U.S. 593, 599 (2010)).
7 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
8 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
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As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: Improvements to another
technology or technical field9; improvements to the functioning of the
computer itself10; and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 11
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) to an abstract idea 12; mere instructions to implement an abstract
idea on a computer13 ; or requiring no more than a generic computer to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry. 14
9 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
10 Id. at 2359.
11 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
12 Id. at 2357-58.
13 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
14 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
Alice Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are directed to an abstract idea similar to
the abstract idea in Electric Power. Ans. 11. That is, we conclude the
present claims are directed to the abstract idea of collecting information and
analyzing it, which is similar to Electric Power. Moreover, we conclude the
present claims are directed to the abstract idea of obtaining and comparing
data, similar to that in CyberSource Corp. v. Retail Decisions, Inc., 654 F .3d
1366 (Fed. Cir. 2011). And we conclude the present claims are directed to
the abstract idea of parsing and comparing data, similar to the abstract idea
in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
In addition, we disagree with Appellants' argument that the present
claims are directed to an improvement in technology (App. Br. 16-18)
because the present claims are directed to an improved abstraction that
automate provisioning, which happen to use computer tools in a nominal
manner. 15 Accelerating a mental process with a processor does not make
claims patent eligible. Bancorp Servs., LLC v. Sun Life Assurance Co., 687
F.3d 1266, 1279 (Fed. Cir. 2012) ("Using a computer to accelerate an
ineligible mental process does not make that process patent-eligible.").
15 Infra n.14.
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Because the present claims are directed to an abstract idea, we
proceed to step (2) of the Alice, two-part test.
Alice Step 2
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are not directed to significantly more than
the abstract idea because they recite generic components that perform
generic functions that are well understood, routine, and conventional. Ans. 4.
The Specification states, "Generic techniques and mechanisms for
managing data quality and provenance can be included in a recurring
revenue management approach" ( emphasis added). Spec. ,r 57. And the
Specification states "[ t ]hese various aspects or features can include
implementation in one or more computer programs that are executable
and/or interpretable on a programmable system including at least one
programmable processor, which can be special or general purpose, coupled
to receive data and instructions from, and to transmit data and instructions
to, a storage system, at least one input device, and at least one output device"
( emphasis added). Id. ,r 79. We therefore conclude the Specification recites
generic elements that are well-understood, routine, and conventional.
We also disagree with Appellants' argument that Enfzsh states that
patentable algorithms can execute on generic computing hardware, which
means the present claims amount to significantly more than any abstract idea
(Reply Br. 2-3) because Appellants' reliance on Enfzsh is misplaced; that is,
Enfzsh pertains to Alice step 1 (i.e., abstract idea) rather than Alice step 2
(i.e., significantly more). Nonetheless, the present claims are directed to an
abstract idea without significantly more for the reasons stated supra and
infra.
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Additionally, we disagree with Appellants' argument that, under both
DDR and BASCOM, the present claims are patent eligible because they
recite a non-conventional, non-generic, and specifically ordered arrangement
of elements (App. Br. 19--22); we disagree because accelerating a mental
process similar to that in Electric Power, Berkheimer, and CyberSource does
not make claims patent eligible. Bancorp, 687 F.3d at 1279.
Furthermore, we disagree with Appellants' argument that the present
claims are patent eligible because they do not preempt any abstract idea
(App. Br. 23-26); while preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Also, we disagree with Appellants' argument that the Examiner
introduced new arguments by citing to Electric Power and they do not have
an opportunity to respond (Reply Br. 5---6) for the following reasons. First,
the Examiner does not make arguments. Rather, the Examiner makes
findings and conclusions. In this case, because the Examiner is addressing
an issue under 35 U.S.C. § 101, the Examiner is making a conclusion.
Second, as stated supra, subject matter eligibility under 35 U.S.C. § 101 is a
question of law that is reviewable de nova. Third, Appellants had an
adequate opportunity to respond in their Reply Brief, and they did respond
(see e.g., Reply Br. 5 ("Applicants point out that the claims in Electric
Power Group were found ineligible for describing little more than an
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intended result.")). Fourth, we note the issue of whether an Examiner raises
a new theory for the first time in an Answer is a petitionable matter and not
an appealable matter. See 3 7 C.F .R. § 41.40( a). Appellants failed to timely
file such a petition and, therefore, waived the argument that the rejection
must be designated as a new ground of rejection. See 37 C.F.R. § 4I.40(a).
Appellants do not argue separately dependent claims 2---6, 8-12, 14--
18, and 20 with particularity, but assert the rejections of those claims should
be withdrawn for at least the same reasons as argued in independent claims
1, 7, and 13. App. Br. 26. Accordingly, we sustain the Examiner's rejection
of: (1) independent claims 1, 7, and 13; and (2) dependent claims 2---6, 8-12,
14--18, and 20 under 35 U.S.C. § 101.
35 us.c. § 103
The Examiner concludes the limitation:
wherein the identification information of each reference tag
comprises an indication of a source from which the associated
extracted content was received, the identification information
further comprising a tag history including a history of previous
reference tags that have been associated with the extracted
content with which the reference tag is associated, the tag history
configured to provide the history and source of origin of all
changes to the associated extracted content
(hereinafter "the disputed limitation") recited in claims 1, 7, and 13 amounts
to non-functional descriptive material. Final Act. 9-10; Ans. 8, 13-14.
Additionally, the Examiner finds Gotz and Caballero do not teach "the
disputed limitation," but the present claims remain unpatentable because
"the disputed limitation" amounts to non-functional descriptive material.
Final Act. 7-9; Ans. 6-8.
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Appellants argue "the disputed limitation" does not amount to non-
functional descriptive material because the final part of claim 1 recites
"'resolving the duplicate data condition by applying a predefined approach
to conflict resolution that is based on the identification information in the
reference tags of the content of the first unit of data and the second unit of
data"' and the Examiner cannot ignore limitations from the entirety of the
claim. App. Br. 27-28. Appellants also argue paragraph 62 of the
Specification describes an example of how a reference tag can be used.
Reply Br. 8 ( citing Spec. ,r 62). We agree with Appellants that the disputed
limitation does not amount to non-functional descriptive material.
The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003), aff'd, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), affd, 191 F. App'x 959 (Fed. Cir. 2006).
However, in In re Distefano, 808 F.3d 845,851 (Fed. Cir. 2015), the Federal
Circuit reasoned although selected web assets can and likely do
communicate some information, the content of the information is not
claimed. In Distefano, the Federal Circuit held the Board erred in finding
that the origin of assets was subject to no patentable weight under the printed
matter doctrine. Id.
Similarly, the present claims recite a "source from which the
associated extracted content was received" (i.e., the origin) and a "source of
origin of all changes to the associated extracted content" (i.e., the origin).
Therefore, pursuant to Distefano, the limitations "source from which the
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associated extracted content was received" and a "source of origin of all
changes to the associated extracted content" recited in present claims 1, 7,
and 13 should be given patentable weight. However, as stated supra, the
Examiner finds Gotz and Caballero do not teach "the disputed limitation."
Therefore, on this record, the Examiner has not shown sufficiently or
explained how the cited references teach the disputed limitation.
Accordingly, we do not sustain the Examiner's rejection of:
(1) independent claims 1, 7, and 13; and (2) dependent claims 2-6, 8-12,
14--18, and 20 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision rejecting claims 1-18 and 20
under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-18 and 20
under 35 U.S.C. § 103(a).
Because we affirm on at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1-
18 and 20. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 41.50(±).
AFFIRMED
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