Ex Parte Ponnalagu et al

Patent Trial and Appeal Board

Jun 29, 2018

12885870 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/885,870 09/20/2010
89885 7590 06/29/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Karthikeyan Ponnalagu
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.
IN92010011 OUS 1
(790.082)
9551
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
06/29/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARTHIKEYAN PONNALAGU, RENUKA
SINDHGATTA RAJAN, and BIKRAM SENGUPTA
Appeal2016-003140
Application 12/885,870 1
Technology Center 3600
Before DEBRA K. STEPHENS, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-16, and 18-27, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 4 and 17
have been cancelled.
We AFFIRM.
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to automatically
generating a service oriented architecture design from business process maps
1 According to Appellants, the real party in interest is International Business
Machines Corporation (App. Br. 3).
Appeal2016-003140
Application 12/885,870
based on specified quality goals (Abstract). Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method comprising:
utilizing a processor to execute computer code
configured to perform the steps of:
assimilating a business process map;
assimilating predetermined quality constraints;
producing at least one semantic business process map,
wherein the at least one semantic business process map is
tagged with at least one concept and a frequency of occurrence
of the at least one concept occurring within the at least one
semantic business process map;
searching among service oriented architecture design
models via employing at least one search heuristic and at least
one search constraint, wherein the at least one search constraint
limits a search space;
obtaining at least one initial design model via applying
the at least one search heuristic and the at least one search
constraint; and
automatically yielding a service oriented architecture
design model satisfying the predetermined quality definitions,
via iteration of the at least one initial design model, the iteration
being guided by the at least one search heuristic.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bonabeau
Abu el Ata
Wilcock
US 2001/0053991 Al
US 2006/0241931 Al
US 2010/0115490 Al
2
Dec. 20, 2001
Oct. 26, 2006
May 6, 2010
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Application 12/885,870
REJECTIONS
Claims 1-3, 5-16, and 18-27 stand rejected under 35 U.S.C. § 101 for
being directed to non-statutory subject matter (Final Act. 2-3); and
Claims 1-3, 5-16, and 18-27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Abu el Ata, Wilcock, and Bonabeau (id. at 3-13).
ISSUES
Issue 1: Has the Examiner erred in concluding the invention as
recited in claims 1-3, 5-16, and 18-27, is directed to non-statutory subject
matter?
Issue 2: Has the Examiner shown the combination of Abu el Ata,
Wilcock, and Bonabeau teaches or suggests "producing at least one semantic
business process map, wherein the at least one semantic business process
map is tagged with at least one concept and a frequency of occurrence of the
at least one concept occurring within the at least one semantic business
process map," as recited in independent claim 1 and as commensurately
recited in independent claims 14 and 15?
ANALYSIS
35 US.C. § 101: Claims 1-3, 5-16, and 18-27
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title" (35 U.S.C. § 101). The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that"' [l]aws of
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nature, natural phenomena, and abstract ideas' are not patentable" (Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(citation omitted)). To determine patentable subject matter, the Supreme
Court has set forth a two-part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas" (Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014)). "The inquiry often is whether the claims are directed to 'a specific
means or method' for improving technology or whether they are simply
directed to an abstract end-result" (RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted)). A court must be
cognizant that "all inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas" (Mayo, 566
U.S. at 71 ), and "describing the claims at ... a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule" (Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016)). Instead, "the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter" (Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015)).
In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application" (Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78)).
The Supreme Court has "described step two of this analysis as a search for
an 'inventive concept'-i.e., an element or combination of elements that is
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'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself"' (id. (brackets and citation
omitted)). For computer-related technology, the Federal Circuit has held
that a claim may pass the second step if "the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]" (DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., "a challenge
particular to the Internet")).
"Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts" (SAP Am., Inc. v. InvestPic, LLC, 890 F .3d 1016, 1020
(Fed. Cir. 2018)).
Appellants contend that the "claims are not directed to a fundamental
economic practice but are rather directed to techniques for automatically
yielding a service oriented architecture model based upon assimilated
business process maps and assimilated predetermined quality definitions"
(App. Br. 15). The Examiner responds that the "claim(s) is/are directed to
the abstract idea of determining an optimal model from among multiple
models" (Ans. 3). According to Appellants,
the current application does not merely determine an optimal
model from among multiple models, but rather employs
iterative search techniques to arrive at a "service oriented
architecture design model satisfying the predetermined quality
definitions, via iteration of the at least one initial design model,
the iteration being guided by the at least one search heuristic."
(Reply Br. 16). Appellants argue the present claims are distinguishable from
prior cases holding claims ineligible under § 101 and instead analogizes to
DDR Holdings, arguing that the present claims are eligible because they are
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"necessarily rooted in computer technology" (App. Br. 19) and "involve[]
re-programming of the computer to permit a system in which quality goals
mapped to a semantic business process map are used to yield a service
oriented architecture design model" (Reply Br. 19).
We are not persuaded of error, however, because neither the claims as
presently written nor the abstract idea that the claims are directed to are as
narrow as Appellants assert. "In addressing the first step of the section 101
inquiry, as applied to a computer-implemented invention, it is often helpful
to ask whether the claims are directed to 'an improvement in the functioning
of a computer,' or merely 'adding conventional computer components to
well-known business practices"' (Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016) (quoting Enfzsh,
822 F.3d at 1338)). Here, the identified abstract idea of determining an
optimal model from among multiple models (Ans. 3) parallels "generating
tasks [based on] rules ... to be completed upon the occurrence of an event"
(Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F .3d
1336, 1344 (Fed. Cir. 2013) (alteration in original)). Further, "with the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose [the steps] from being performed by a
human, mentally or with pen and paper" (Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)).
Appellants further argue "there is clearly no risk that the claims will
'tie up' the subject matter of 'determining an optimal model from among
multiple models', or pre-empt others from 'determining an optimal model
from among multiple models"' (App. Br. 16 (citation omitted)). "But we
have consistently held that claims that are otherwise directed to patent-
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ineligible subject matter cannot be saved by arguing the absence of complete
preemption" (Return Mail, Inc. v. US. Postal Service, 868 F.3d 1350, 1370
(Fed. Cir. 2017)). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility" (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)). "Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot" (id.).
Appellants contend "the recited claims add specific limitations other
than what is well-understood, routine and conventional in the field [and i]n
particular, [ that the Examiner] has mischaracterized the field, as evidenced
by the art-based rejections" (App. Br. 19-20). Appellants argue the present
claims "are not conventional steps in this field, and [Appellants'] claims are
confined to a particular useful application, thus meeting the requirement of
adding 'significantly more' to any alleged abstract idea" (id. at 20).
The Examiner responds that "[ t ]he limitations of searching among
SOA design based on search constraint and automatically yielding a SOA
model satisfying the predetermined quality definitions is similar to
comparing new and stored information and using rules to identify options,
and therefore an abstract idea" (Ans. 4). According to Appellants, "the
present claims specifically recite additional, novel, and non-obvious
functionality that improves the operation of the computer itself in connection
with automatically yielding a service oriented architecture design model"
and therefore, they cannot be said to be well-understood, routine, and
conventional (Reply Br. 21 ).
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Step two of the Alice/Mayo framework, however, is not an evaluation
of novelty or non-obviousness, and instead requires that the inventive
concept be significantly more than the abstract idea itself (Alice, 134 S. Ct.
at 2355). Thus, "under the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility" ( Genetic Techs. Ltd. v. Merial L.L. C., 818
F.3d 1369, 1376 (Fed. Cir. 2016)). A novel and nonobvious claim directed
to a purely abstract idea is, nonetheless, patent-ineligible (see Mayo, 132 S.
Ct. at 1304).
Moreover, "[t]he Supreme Court and [the Federal Circuit] have
repeatedly made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not render the
claims any less abstract" (Affinity Labs of Texas, LLC v. DirecTV, LLC, 838
F.3d 1253, 1259 (Fed. Cir. 2016)). As discussed above, here the invention
as recited parallels the abstract idea identified in Accenture, limited to a
service oriented architecture design context.
The claims recite a processor, i.e., a generic computer component.
Appellants have not directed our attention to anything in the Specification
that shows any specialized computer hardware is required ( e.g., Spec. ,r 17
("[ e ]xamples of well-known computing systems, environments, and/or
configurations that may be suitable for use with computer system/server 12
include"); ,r 25 ("the processes, arrangements and products ... can be
carried out on or in accordance with essentially any suitable computer
system or set of computer systems"); ,r 25 ("most if not all of the process
steps, components and outputs ... can be performed or utilized by way of a
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processing unit or units")). In addition, other than being implemented on a
generic "processor," Appellants have not explained sufficiently why the
claims could not be performed mentally.
Appellants contend "[ t ]here is no evidence of long and prevalent use
in the economy of [Appellants'] specially claimed system and method.
Indeed, the present systems are necessarily computerized" (Reply Br. 22).
We are not persuaded. "[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter" (Bancorp Servs., L.L. C. v.
Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also
FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) ("the inability for the human mind to perform each claim step does not
alone confer patentability") ). Contrary to Appellants' argument, neither the
problem nor the solution here are rooted in computer technology.
Appellants' Specification does not describe any new or unique computer
hardware or software, and the law is clear that simply programming a
computer to perform what would otherwise be an abstract idea or mental
process is not sufficient to impart patent eligibility (see Alice, 134 S. Ct. at
2359).
Accordingly, we sustain the Examiner's rejection under§ 101 of
claim 1, and claims 2, 3, 5-16, and 18-27, which Appellants do not argue
separately. 2 See App. Br. 14--24; 37 C.F.R. § 4I.37(c)(l)(iv).
2 With respect to claim 15 being amended to recite "non-transitory" (App.
Br. 24--25), the Examiner does not maintain this portion of the rejection
under 35 U.S.C. § 101, on appeal (Ans. 6). We therefore do not address it
here.
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35 USC§ 103: Claims 1-3, 5-16, and 18-27
Claim 1 recites "producing at least one semantic business process
map, wherein the at least one semantic business process map is tagged with
at least one concept and a frequency of occurrence of the at least one
concept occurring within the at least one semantic business process map."
Independent claims 14 and 15 recite commensurate limitations.
Appellants contend that Wilcock fails to disclose "wherein the at least
one semantic business process map is tagged with at least one concept and a
frequency of occurrence of the at least one concept occurring within the at
least one semantic business process map" (App. Br. 26). The Examiner
relies on Wilcock for teaching or suggesting this limitation. Final Act. 5---6.
Wilcock teaches "[a] service model state manager is arranged to cause the
service model to be developed to another of its states of development
according to the transition model" (Wilcock ,r 12). In particular, Wilcock
discloses:
[Change Requests (CRs)] can read and write the [Service
Lifecycle Model (SLM)], analyse the model, and cause actions
in the real world. In particular, CRs create and modify the
[System Template Model (STM)] and SM, and carry out
deployment operations. The action performed by the CRs can
be parameterised by information held in the invocation entry for
the CRs in the [Model State Transition (MST)]. A typical
invocation pattern for a CR is that a parameter refers to a
supplemental model containing a declarative description of a set
of changes to be applied to the SLM. For example, the
Infrastructure Design Template Model is a supplemental model
that describes the System Template Model. In addition to the
parameters passed from the MST, the action of the CR can be
modified by the current state of the information in the SLM. In
particular CRs can read and write information as key-value
pairs in the State Information store, which acts as a convenient
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shared store to pass the results of decisions and actions from
one step to the next. The MST behaviour model is structured
into semantically meaningful collections of related processing
steps ( CRs). The MST defines a set of lifecycle states for the
service and allowed transitions between those states. The MST
also defines the sequence of parameterised CR invocations to
transition the lifecycle of the service between each of the
defined states. Preconditions can be specified on transitions
between states the transition is only allowed if the preconditions
are met. Management of the service lifecycle is presented as
requests to transition the SLM to a desired state
(Wilcock ,r 150). Thus, Wilcock discloses writing an SLM, updating it with
CRs, and comparing it to the MST, which teaches producing at least one
semantic business process map.
The Examiner relies on paragraphs 53, 85-87, and 174 of Wilcock to
teach "tagged with ... a frequency of occurrence of the at least one concept
occurring within the at least one semantic business process map" (Ans. 6-7).
The Examiner explains that "[p ]erformance could include the total and
concurrent number of users to be supported (i.e. a frequency of occurrence
for business model)" (Ans. 7). However, we find that the claim requires
"frequency" to specifically relate to a count "of the at least one concept,"
and that paragraphs 53, 85-87, 150, and 174 fail to teach a "frequency" as
required. Thus, the Examiner has not shown that Wilcock teaches or
suggests "tagged with ... a frequency of occurrence of the at least one
concept occurring within the at least one semantic business process map" as
recited in claim 1.
Accordingly, we cannot sustain the Examiner's rejections under§ 103
of independent claims 1, 14, and 15, and their dependent claims 2, 3, 5-13,
16, and 18-27.
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Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
the combined teachings of Abu el Ata, Wilcock, and Bonabeau render
claims 1-3, 5-16, and 18-27 unpatentable.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-3, 5-16, and 18-27 under§ 101,3 but we reverse the Examiner's
decision rejecting claims 1-3, 5-16, and 18-27 under§ 103.
Because we affirm at least one rejection for every appealed claim, we
designate this Decision an affirmance.
TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
3 In the event that prosecution is continued, the Examiner may wish to
consider claims 5 and 18 under 35 U.S.C. § 112, fourth paragraph, due to
those claims depending from canceled claims.
12