Ex Parte Sherrill et al

Patent Trial and Appeal Board

Nov 13, 2018

13772926 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/772,926 02/21/2013
118627 7590 11/15/2018
McCarter & English, LLP / W almart Apollo, LLC
265 Franklin Street
Boston, MA 02110
Edward H. Sherrill
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.
114826-52302 8085
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
docket@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD H. SHERRILL, DONALD LAWRENCE COOK III,
and JASON PAUL MCCRORY
Appeal2017-008392
Application 13/772,926
Technology Center 3600
Before JOHN A. JEFFERY, JUSTIN BUSCH, and JAMES W. DEJMEK,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5, 7-11, 13-17, 19, and 20. We have jurisdiction
under 35 U.S.C. § 6(b ). We affirm.
STATEMENT OF THE CASE
Appellants' invention ensures that business entities can verify that the
format of electronic documents complies with certain requirements before
the documents are used in electronic commerce transactions. See generally
Spec. ,r,r 30, 47--48; Figs. 11-12. Claim 1 is illustrative:
1 Appellants identify the real party in interest as Wal-Mart Stores Inc. App.
Br. 3.
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Application 13/772,926
1. A computer-implemented method for authorizing
exchange of data between a first computing system and a
second computing system, the method comprising:
receiving a vendor selection from a user of the first
computing system;
selecting, at least one Electronic Document Interchange
(EDI) transaction from a plurality of available EDI transactions
at the first computing system, wherein the at least one EDI
transaction is associated with a specified format for exchange of
data between the first and second computing system;
testing the EDI transaction using EDI test data to
facilitate exchange of the EDI test data between the first and
second computing systems;
confirming by the second computing system that the test
EDI data conforms to the specified format based on the
exchange of EDI test data;
in response to confirming that the test EDI data conforms
to the specified format, providing, from the second computing
system to the first computing system, authorization to exchange
data with the second computing system;
exchanging security certificates between the first and
second computing systems;
receiving Applicability Statement 2 (AS2) information
from the first computing system, the AS2 information
associated with at least one EDI transaction;
verifying the AS2 information from the first computing
system;
prompting the user of the first computing system to
schedule a production date based on the AS2 information;
receiving scheduling information from the first
computing system;
emailing approval notification to a vendor associated
with the vendor selection; and
scheduling production for a plurality of orders based on
the scheduling information and the vendor associated with the
vendor selection.
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THE REJECTIONS
The Examiner rejected claims 1-5, 7-11, 13-17, 19, and 20 under
35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 2-5. 2
The Examiner rejected claims 1-5, 7-11, 13-17, 19, and 20 under
35 U.S.C. § 103 as unpatentable over Stone (US 2007/0203803 Al;
published Aug. 30, 2007) and Barry, III (US 2013/0222116 Al; published
Aug. 29, 2013) ("Barry"). Final Act. 5-14.
THE INELIGIBILITY REJECTION
The Examiner finds that the claimed invention is directed to an
abstract idea, namely exchanging information to generate a production
schedule, 3 which is said to be similar to concepts involving, among other
things, (1) an idea of itself; (2) human activity relating to commercial
practices; (3) organizing information; and ( 4) data recognition, collection,
storage, and management. See Final Act. 2--4; Ans. 9-11. According to the
Examiner, the claimed elements do not add significantly more to the abstract
idea to render the claimed invention patent-eligible because, among other
things, the recited elements do not improve a specific technology or the
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
April 21, 2016 ("Final Act."); (2) the Appeal Brief filed November 7, 2016
("App. Br."); (3) the Examiner's Answer mailed March 20, 2017 ("Ans.");
and (4) the Reply Brief filed May 18, 2017 ("Reply Br.").
3 Although the Examiner's rejection merely quotes the claim language in
connection with the identified abstract idea, the Examiner's Answer
nonetheless further generalizes the claimed invention as directed to
exchanging information to generate a production schedule. Compare Final
Act. 3 with Ans. 12-13. Accordingly, we presume that this latter
characterization corresponds to the identified abstract idea.
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computer itself, but rather recite generic computer components whose
functions merely implement the abstract idea on a computer. See Final Act.
4--5; Ans. 11-15.
Appellants argue that the claimed invention is not directed to an
abstract idea, but rather is directed to a "self on-boarding process" for
preventing EDI transactions from occurring between first and second
computing systems until (1) the first system submits EDI test data for
transmission to the second system, and (2) the second system (a) determines
the EDI data's compliance for transmission, and then (b) authorizes the first
system to perform an actual EDI transaction, including exchanging security
certificates. App. Br. 7-10; Reply Br. 2-5. According to Appellants, the
claimed invention ( 1) avoids problems associated with attempts to process
data with an incorrect format, including system outages and requiring more
memory to process that data, and (2) improves operational performance and
processing efficiency. App. Br. 7-10. Therefore, the claimed invention is
said to be directed to a technical solution to a "computer-centric" problem,
and not an abstract idea. App. Br. 10; Reply Br. 5.
Appellants add that even if the claimed invention were directed to an
abstract idea, the claimed limitations recite significantly more than the
alleged abstract idea. App. Br. 10-13; Reply Br. 5-7. According to
Appellants, the claimed invention recites more than merely exchanging
documents in a computer environment, but rather enables disparate
computing systems to communicate effectively with less likelihood of
system failure, delays, and network congestion by ensuring document
compliance before actual EDI transactions. App. Br. 11-13.
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ISSUE
Has the Examiner erred in rejecting claim 1 by concluding that it is
directed to ineligible subject matter under § 101? This issue turns on
whether the claimed invention is directed to a patent-ineligible abstract idea
and, if so, whether the claim's elements----considered individually and as an
ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we disagree with the Examiner that the
claimed invention is directed to an abstract idea, namely exchanging
information to generate a production schedule. See Final Act. 2--4; Ans. 9--
11. Claim 1 recites, in pertinent part, a method for authorizing data
exchange between first and second computing systems, where a selected
EDI transaction associated with a specified format is tested using EDI test
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data. The claim further recites that, responsive to the second computing
system confirming that the EDI test data conforms to a specified format
based on exchanging this data between the computing systems, authorizing
exchanging data with the second computing system. Claim 1 adds, in
pertinent part, (1) exchanging security certificates between the computing
systems, (2) verifying AS2 information received from the first computing
system, (3) emailing approval notification to a selected vendor, and
( 4) selecting production for orders based on the scheduling information and
vendor.
Notably, the claimed invention tests data electronically to ensure that
data conforms to a particular format before the data is exchanged with the
second computing system. Given this preliminary electronic testing function
on which further data exchange is contingent, we agree with the Appellants
that the claimed invention is not directed to an abstract idea, but rather
solves a technical problem by, among other things, reducing system outages
and memory issues and increasing processing efficiency as Appellants
indicate. See App. Br. 9-10. In short, the claimed invention ensures
technical advantages resulting from EDI data format compliance and avoids
technical problems resulting from non-compliance.
To be sure, collecting information is within the realm of abstract
ideas----even when the information is limited to particular content. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). It is
also well settled that analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, is essentially a
mental process within the abstract idea category. Id. at 1354. And merely
presenting the results of abstract processes of collecting and analyzing
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information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
Id. But unlike the claimed invention in Electric Power, the claimed
invention here does not merely gather, manipulate, analyze, and present
information of a specified content, rather electronically tests data for
conformance with a particular format before data is further exchanged-a
technical solution to a technical problem that, among other things, reduces
system outages and memory issues and increases processing efficiency as
Appellants indicate. See App. Br. 9--10.
In reaching this conclusion, we acknowledge the court's holding in
Easyweb Innovations, LLC v. Twitter, Inc., 689 F. App'x 969, 969--71 (Fed.
Cir. 2017) (unpublished), where the court held ineligible a claim reciting a
message publishing system that identified an authorized sender of a received
message, where the identification depended on the message's format. See
id. at 970. Notably, the claim in Easyweb recited that after converting at
least part of the message to a different format, the converted portion was
published only if the sender was identified as authorized. Id. at 970. The
court held that because the claim (1) used generic computer technology to
perform data collection, analysis, and publication, and (2) did not recite an
improvement to a particular computer technology, the claim was directed to
the abstract idea of receiving, authenticating, and publishing data. Id. at 971.
That is not the case where, as here, the claimed invention first tests an
EDI transaction using EDI test data as a basis for authorizing further data
transmissions-a test that that solves technical problems involving system
outages and operational inefficiencies as noted previously.
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Nor is this a case that merely tests financial data before offering a sale
at that price as was the case in OIP Technologies v. Amazon.com, Inc., 785
F.3d 1359, 1361---63 (Fed. Cir. 2015). There, the court held ineligible claims
reciting testing product prices by (1) sending messages over a network, (2)
gathering customer-response statistics during testing, (3) selecting an
appropriate sales price, and ( 4) sending a second set of messages including
offers at the selected price over the network. See OIP Techs., 785 F.3d at
1361---63. But the test data in OIP was not to ensure compliance with a
certain format to provide the technical advantages of such compliance ( and
avoid the technical problems resulting from non-compliance) as noted
above, but rather merely provided a proposed sales price at which to sell a
product. See id.
The claim at issue in Clarilogic, Inc. v. FormFree Holdings
Corporation, 681 F. App'x 950 (Fed. Cir. 2017) (unpublished) is also
distinguishable from the claimed invention. There, the court held ineligible
a recited method for providing certified financial data indicating an
individual's financial risk, where financial account data was (1) collected,
(2) transformed into a desiredformat, and (3) validated to identify
exceptions indicating incorrect data or financial risk. See id. at 952-56.
Notably, these exceptions were confirmed by collecting and analyzing
additional data. See id. at 952. By transforming the collected account data
into a desired format, the Clarilogic system effectively confirmed that the
data conformed to a specified format.
Despite this format transformation and subsequent additional data
collection to confirm exceptions (see id.), these functions are nevertheless
not reasonably analogous to the recited EDI transaction test, and providing
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authorization to the second computing system responsive to the data
conforming to the specified format, as claimed. Unlike the Clarilogic
system, the test of the claimed invention avoids certain technical problems
resulting from non-compliance with the specified format.
To be sure, the court in Shortridge v. Foundation Construction
Payroll Service, LLC, 655 F. App'x 848 (Fed. Cir. 2016) (unpublished) held
ineligible claims reciting public works construction payroll processing,
where input data was verified as compliant with requirements of (1) a core
payroll processing and calculation engine, and (2) a construction payroll
record (CPR) report before producing this report. See Shortridge, 655 F.
App'x at 850-54.
Despite this data verification and subsequent report generation (see
id.), these functions are nevertheless not reasonably analogous to the recited
EDI transaction test, and providing authorization to the second computing
system responsive to the data conforming to the specified format, as
claimed. Unlike the Shortridge system, the test of the claimed invention
avoids certain technical problems resulting from non-compliance with the
specified format.
We also recognize that the court in TDE Petroleum Data Solutions,
Inc. v. AKM Enterprise, Inc., 657 F. App'x 991 (Fed. Cir. 2016)
(unpublished) held ineligible claims reciting determining the state of a well
operation that automatically selected a well operation state only after
determining validity of received mechanical and hydraulic data.
Despite this data validity determination and subsequent state selection
(see id.), these functions are nevertheless not reasonably analogous to the
recited EDI transaction test, and providing authorization to the second
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computing system responsive to the data conforming to the specified format,
as claimed. Unlike the TDE system, the test of the claimed invention avoids
certain technical problems resulting from non-compliance with the specified
format.
For the foregoing reasons, we agree with Appellants that claim 1 is
not directed to an abstract idea. Because this issue is dispositive regarding
our reversing the Examiner's ineligibility rejection, we need not address
Appellants' additional arguments, including whether the additional recited
elements add significantly more to the abstract idea under Alice step two.
Therefore, we persuaded that the Examiner erred in rejecting claims
1-5, 7-11, 13-17, 19, and 20 under§ 101.
THE OBVIOUSNESS REJECTION
Regarding claim 1, the Examiner finds that Stone's method for
authorizing data exchange includes, among other things, (1) testing an EDI
transaction using EDI test data to facilitate exchange of the test data between
first and second computing systems, (2) confirming, by the second
computing system, that the test EDI data conforms to a specified format
based on the exchange of EDI test data, and (3) responsive to this
confirmation, providing, from the second to the first computing system,
authorization to exchange data with the second computing system. Final
Act. 5-9. Although the Examiner acknowledges that Stone does not
(1) exchange security certificates between the computing systems, (2)
receive and verify AS2 information from the first computing system, and
(3) prompt the first computing system's user to schedule a production date
based on the AS2 information, the Examiner cites Barry for teaching these
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features in concluding that the claim would have been obvious. Final
Act. 9-11.
Appellants argue that the prior art does not teach or suggest the recited
testing, confirmation, and authorization steps. App. Br. 15-17; Reply Br. 8-
10. According to Appellants, Stone does not determine compatibility of EDI
data generated by a first computing system before the second computing
system allows the first computing system to enter into an actual EDI
transaction. App. Br. 15. Rather, Stone is said to allow for an EDI
transaction to occur based on downloaded EDI documents, and allows the
receiving party to confirm or cancel the transaction that is already in
progress. Id.; Reply Br. 8-9. Therefore, Appellants contend, Stone does not
prevent an EDI transaction from occurring between first and second
computing systems until after testing completes, nor does Barry cure that
deficiency. App. Br. 15-17; Reply Br. 8-9. Appellants argue other
limitations summarized below.
ISSUE
Under§ 103, has the Examiner erred by finding that Stone and Barry
collectively would have taught or suggested (1) the testing, confirmation,
and authorization steps in claim 1, and (2) the structure validation rules in
claim 3?
ANALYSIS
Claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, 17, 19, and 20
As noted above, claim 1 recites a method for authorizing exchange of
data between a first and a second computing system, including (1) receiving
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a vendor selection from a user of the first computing system; (2) selecting at
least one EDI transaction associated with a specified format at the first
computing system; (3) testing an EDI transaction using EDI test data to
facilitate exchange of the test data between first and second computing
systems, (4) confirming, by the second computing system, that the test EDI
data conforms to a specified format based on the exchange of EDI test data,
and (5) responsive to this confirmation, providing,from the second to the
first computing system, authorization to exchange data with the second
computing system.
Our emphasis underscores that the first and second computing
systems each have unique and significant roles in this authorization process.
Despite these distinct functions of the respective computing systems, the
Examiner does not clearly map the first and second computing systems to
corresponding elements in Stone-an omission that makes our task all the
more difficult in identifying these key elements. See Final Act. 5-9; Ans.
15-1 7. This ambiguity is compounded by the Examiner omitting the phrase
"of the first computing system" in finding that Stone teaches the receiving a
vendor selection from a user in claim 1 's first clause. See Final Act. 6.
Although the Examiner finds that Stone's paragraph 11 teaches receiving a
vendor selection from a user, the Examiner does not say whether this user is
of the first computing system as claimed, nor does the Examiner rely on
Barry to cure that apparent deficiency. See Final Act. 6, 9-11. The
limitation is simply omitted from the rejection.
Despite these ambiguities and omissions, we nevertheless presume
that the Examiner intends to map the customer's computing system in Stone
to the recited "first computing system," and the computing system that
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receives incoming purchase orders in Stone's Figure 9 as the "second
computing system."
Turning to the rejection, the Examiner cites Stone's paragraph 99 for
teaching the disputed testing, confirmation, and authorization steps. Final
Act. 6-8. In the Answer, however, the Examiner cites Stone's paragraphs
86 and 87 and Figures 9, 10, and 12 for teaching these limitations. Ans. 16-
17.
Stone's Figure 9 shows a process for automatically processing
incoming purchase orders from a customer. Stone ,r 86. After downloading
all new EDI files from an EDI provider, and if a purchase order number does
not exist in the system, the system determines whether incoming purchase
order data matches quotation data. Stone ,r,r 86-87; Fig. 9 (steps 904, 906,
924, 926). If there is a match, vendors are emailed advising that they have
orders to confirm in step 93 6, and then a confirmation process begins in step
920--the details of which are shown in Figures 1 Oa-1 Od. Upon
confirmation in steps 1082 and 1084 of Figure 1 Od, the process proceeds to
Figure 12 that details the process for transmitting the purchase order to a
freight forwarder. See Stone ,r,r 31, 88, 98-99. Notably, after confirming
the purchase order's line item status on a record-by-record basis, the line
item data is added to an EDI file that is then transmitted to a freight
forwarder. Stone ,r 99; Fig. 12 (steps 1206, 1210-1218).
Given this functionality, we see no error in the Examiner's reliance of
Stone for at least suggesting the recited testing, confirmation, and
authorization steps. Notably, EDI data is received from a customer
computing system and compared with quotation data to determine a match in
Stone's Figure 9 before purchase order data is sent in an EDI file to a freight
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forwarder in Figure 12. Nothing in the claim precludes this EDI data
received from a customer's computing system from being considered "test
data" that is received by a "second computing system" as the Examiner
suggests. See Final Act. 6-8; Ans. 16-17. Moreover, Stone's recipient
system effectively confirms that this "test data" conforms to a specified
format in step 926 of Figure 9. Notably, this format confirmation precedes
the purchase order confirmation process in Figure 10 which at least suggests
that, responsive to this format confirmation, authorization was provided to
the customer to exchange data with the computing system that receives
incoming purchase orders (i.e., the "second computing system"). See Stone
,r 86 (noting that a customer can revise or confirm the purchase order in
Figures 10 and 12 (steps 920 and 922)).
To be sure, this data match determination and associated confirmation
in Stone's Figure 9 occurs before another EDI transaction in step 1218 of
Figure 12 occurs with a different entity, namely the freight forwarder.
Nevertheless, the fact that the customer can revise or confirm the purchase
order that is involved in this latter transaction at least suggests that
authorization was provided to that customer to exchange data via the
customer's computing system.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, 17, 19, and 20 not argued
separately with particularity.
Claims 3, 9, and 15
We also sustain the Examiner's obviousness rejection of claim 3.
Claim 3 depends from claim 2 that recites the EDI data format confirmation
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is based on verification rules comprising structure validation rules. Claim 3
adds that the structure validation rules comprise a rule ensuring that the date
information within a field of at least one document is logically consistent
with a date when the documents were received.
Despite Appellants' arguments to the contrary (App. Br. 18),
Appellants do not squarely address-let alone persuasively rebut-the
Examiner's reliance on Stone's paragraphs 15 and 86 to 88 for at least
suggesting the recited rule. Accordingly, the weight of the evidence on this
record favors the Examiner's position.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3, and claims 9 and 15 not argued separately with particularity.
CONCLUSION
The Examiner erred in rejecting claims 1-5, 7-11, 13-17, 19, and 20
under§ 101, but did not err in rejecting those claims under§ 103.
DECISION
We affirm the Examiner's decision to reject claims 1-5, 7-11, 13-17,
19, and 20. Because the rejection of each appealed claim is affirmed on at
least one of the grounds specified in the Office Action from which the
appeal was taken, the Examiner's decision to reject these claims is affirmed.
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 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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