Ex Parte Yendluri

Patent Trial and Appeal Board

Nov 14, 2017

12073642 (P.T.A.B. Nov. 14, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/073,642 03/07/2008 Prasad Yendluri 30478-255291 1003
26694 7590 11/16/2017
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
PTOMail@Venable.com
cavanhouten@venable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASAD YENDLURI
Appeal 2016-005590
Application 12/073,6421
Technology Center 3600
Before JUSTIN BUSCH, JOHN D. HAMANN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1—14 and 20. Claims 15—19 were
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Software AG. App.
Br. 3.
Appeal 2016-005590
Application 12/073,642
THE CLAIMED INVENTION
Appellant’s claimed invention relates to “distributed business process
tracking,” and includes clients that can receive notifications from providers
that perform distributed business processes. Abstract. Claim 1 is
reproduced below.
1. A non-transitory computer-readable medium comprising
instructions, which when executed by a computer system causes
the computer system to perform operations for distributed
business process tracking, the distributed business process
including a process executed by the computer system and a
process executed by a remote computer system, the computer-
readable medium comprising:
instructions for receiving from a client via a Web
Service-Process Tracking (WS-PT) web service a request to
initiate a distributed business process;
instructions for determining processes that are used by
the distributed business process;
instructions for sending to the client via the WS-PT web
service a list comprising the determined processes that are
available for tracking;
instructions for receiving from the client via the WS-PT
web service a selected process from the plurality of processes
available for tracking;
instructions for sending to the client via the WS-PT web
service an end point reference for the selected process;
instructions for receiving from the client via the WS-PT
web service a subscription request for the selected process at
the end point reference;
instructions for sending to the client via the WS-PT web
service a confirmation of receipt of the subscription request for
the selected process;
instructions for communicating with the remote computer
system regarding a status of the process executed by the remote
computer system;
and
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instructions for sending to the client via the WS-PT web
service a notice for the selected process, wherein the notice is
based on the communication with the remote computer system;
wherein the client is configured to:
receive notifications from a plurality of providers
at end point references of a second plurality of processes,
wherein the notice is one of the notifications and the
distributed business process comprises the second
plurality of processes, and
determine progress of the distributed business
process toward completion based on the notifications.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1—14 and 20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
(2) The Examiner rejected claims 1—11 and 20 under 35 U.S.C.
§ 102(e) as being anticipated by Vengroff (US 2008/0177872 Al; published
July 24, 2008).
(3) The Examiner rejected claims 12—14 under 35 U.S.C. § 102(e)
as being anticipated by Vengroff or, in the alternative, under 35 U.S.C.
§ 103(a) as being unpatentable over Vengroff.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner erred. We disagree with Appellant’s
arguments with respect to the § 101 rejection, and we incorporate herein and
adopt as our own the findings, conclusions, and reasons with respect to this
rejection as set forth by the Examiner in (1) the February 24, 2015 Final
Office Action (“Final Act.” 2—29) and (2) the March 10, 2016 Examiner’s
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Answer (“Ans.” 2-40). We agree with Appellant that the Examiner errs
with respect to the §§ 102 and 103 rejections.
(1) §101 rejection
Appellant contends the Examiner improperly rejected claims 1—14 and
20 under 35 U.S.C. § 101. See App. Br. 9—13; Reply Br. 2-4. Appellant
argues the rejected claims as a group. Thus, we decide the appeal of the
§101 rejection on the basis of representative claim 1, and refer to the
rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
According to Appellant, the claims do not concern an abstract idea,
and even if they did, the claims would be patent eligible because the claims
amount to significantly more than an abstract idea. See App. Br. 9—13;
Reply Br. 2-A. We find Appellant’s arguments unpersuasive.
Section 101 of the Patent Act provides that “[wjhoever 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 has explained that this
provision is subject to a long-standing, implicit exception: “[ljaws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014). The Court has set forth a
two-part inquiry to determine whether this exception applies. First, we must
determine if the claim at issue is directed to one of those patent-ineligible
concepts. Id. at 2355. Second, if the claim is directed to one of those
patent-ineligible concepts, we must consider the elements of the claim “both
individually and as an ordered combination to determine whether the
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additional elements transform the nature of the claim into a patent-eligible
application.” Id. (internal quotation marks omitted) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72 (2012)).
(i) Abstract idea
We first consider whether the Examiner properly concluded the
claims are directed to one or more abstract ideas. For example, the
Examiner concluded that the claims on appeal “describe the concept of
determining progress of [a] distributed business process toward completion
based on notifications” — or stated more generically as “receiving and
forwarding data.” Final Act. 2, 27—29 (emphasis omitted). The Examiner
further finds that this concept is similar to processing information through a
clearinghouse, which the Federal Circuit has found to be an abstract idea.
See Final Act. 27, 29 (citing Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed.
Cir. 2012)); Ans. 28—29 (citing same).
Appellant argues the claims are not directed to an abstract idea, nor
are they drawn to a fundamental economic practice. App. Br. 10; Reply
Br. 2—A. Rather, the claims “are directed to a computer system that performs
operations for tracking distributed processes,” which is not an abstract idea,
according to Appellant. App. Br. 10. Appellant also asserts that the claims
“do not attempt to preempt every application of the idea of communicating
messages and instructional content between a client and a provider for
distributed business process tracking.” App. Br. 11; Reply Br. 4.
Appellant has not persuaded us that the Examiner erred. The Federal
Circuit has explained that the abstract-idea inquiry requires “looking at the
‘focus’ of the claims, their ‘character as a whole,’” to determine if the claims
are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830
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F.3d 1350, 1353 (Fed. Cir. 2016). Claim 1 recites a method for distributed
business process tracking embodied as instructions on a computer-readable
medium. App. Br. 21.
We agree with the Examiner that the claims are directed to an abstract
idea of “determining progress of [a] distributed business process toward
completion based on notifications.” In this regard, the claims of the instant
application are similar to the claims in Dealertrack, which the Federal
Circuit characterized in their simplest form as (i) receiving data from one
source, (ii) selectively forwarding the data, and (iii) forwarding reply data to
the first source. Dealertrack, 674F.3dat 1333; see also Elec. Power, 830
F.3d at 1351 (finding claims directed to “requiring the collection, analysis,
and display of available information in a particular field” as being directed
to an abstract idea). Furthermore, our reviewing Court treats “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power, 830 F.3d at 1353—54. The claims of
the instant application likewise can be viewed essentially as mental
processes (e.g., determining which processes are used by a distributed
process, listing these processes, selecting a process from the list, requesting
status notification of the selected process, receiving the notification, and
determining status of overall completion of the distributed process). These
cases are sufficiently analogous to establish that the instant claims are
directed to an abstract idea. See Enflsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016) (explaining that when determining whether
claims are directed to an abstract idea, “both this court and the Supreme
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Court have found it sufficient to compare [the] claims at issue to those
claims already found to be directed to an abstract idea in previous cases”).
(ii) Inventive concept
We next consider whether the Examiner correctly concluded the
claims do not include an “inventive concept—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.” Alice, 134 S. Ct. at 2355 (internal quotation marks omitted) (quoting
Mayo, Inc., 566 U.S. at 72—73). The Examiner explained the claims’
“limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry.” Final Act. 2, 28. The
Examiner also finds Appellant’s arguments analogizing the instant claims to
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
inapposite because “the patent claims here do not address problems unique
to the Internet, so DDR has no applicability.” Final Act. 29. Fikewise, the
Examiner finds Appellant’s reliance on Diamond v. Diehr, 450 U.S. 175
(1981), misplaced because “Diehr does not stand for the general proposition
that a claim implemented on a computer elevates an otherwise ineligible
claim into a patent-eligible improvement.” Final Act. 31. The Examiner
concludes “[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception.” Final Act. 2.
Appellant argues “the claims recite an inventive concept that is sufficiently
more than the asserted abstract idea itself.” App. Br. 11. More specifically,
Appellant argues the claims’ limitations “recite a specific implementation of
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tracking a distributed business process.” App. Br. 11—12. For example,
Appellant argues the claims, like in DDR, “recite specific implementations
and practical applications directed to solving a problem in the realm of
computer networks.” App. Br. 10. Appellant similarly argues Diehr is in
accord with the present claims in that the “present claims recite a computer-
implemented process that uses equations in a process designed to solve a
technological problem in conventional practice[, and] . . . like Diehr the
present claims are patent-eligible because they improve an existing
technological process.” App. Br. 12—13. Appellant also contends “the
claims at issue do not attempt to preempt every application of the idea of
communicating messages and instructional content between a client and a
provider for distributed business process tracking.” App. Br. 11.
We agree with the Examiner that the claims do not amount to
significantly more than the abstract idea. Appellant fails to refute
sufficiently the Examiner’s finding, with which we agree, that the claims
perform functions “that are well-understood, routine, and conventional
activities previously known to the industry,” rather than being an inventive
concept. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014) (internal quotation marks omitted) (quoting Alice, 134 S. Ct. at 2357)
(finding using known elements to perform “conventional steps, specified at a
high level of generality, which is insufficient to supply an inventive
concept”). Furthermore, the claims do not specify a special purpose
computer (as Appellant argues the claims’ limitations create), but rather
describe routine and conventional steps to be carried out by the equivalent of
a generic computer (i.e., “apply it with a computer”), and, thus, they fail to
provide an inventive concept. See Versata Dev. Grp., Inc. v. SAP Am., Inc.,
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793 F.3d 1306, 1332 (Fed. Cir. 2015) (finding an inventive concept
“requires more than simply stating an abstract idea while adding the words
‘apply if or ‘apply it with a computer’” (quoting Alice, 134 S. Ct. at 2358)).
The fact that a generic computer requires relevant programming does not
change the programmed generic computer into a special purpose computer.
See id.
We are unpersuaded by Appellant’s reliance on DDR and Diehr.
DDR addressed a technological problem specific to a particular
technological environment by implementing a specific solution for that
technological environment and different from the routine or conventional
use for that environment. Diehr involved a transformative manufacturing
process involving “constantly determining the temperature of the mold [and]
constantly recalculating the appropriate cure time through the use of the
[mathematical] formula.” See Diehr, 450 U.S. at 187. Appellant has not
provided persuasive evidence of any similar or sufficient transformative use.
We also are unpersuaded by Appellant’s arguments that the claims
pose no risk of preempting the abstract idea itself. A lack of preemption
does not make a claim patent eligible. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[TJhatthe
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
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For the above reasons, we sustain the Examiner’s rejection of claims
1-14 and 20 under 35 U.S.C. § 101.
(2) Arguments relating to §§ 102 and 103 rejections
Appellant argues Vengroff fails to disclose that “the client is
configured to . . . determine progress of the distributed business process
toward completion based on the notifications,” as recited in independent
claims 1 and 12, and in similar, relevant scope in independent claim 8. App.
Br. 13—15; Reply Br. 5—7. More specifically, Appellant argues Vengroff
fails to make any mention of determining progress of a distributed business
process toward completion. App. Br. 14—15 (citing Vengroff 126). Rather,
Vengroff discloses “aggregating] multiple outgoing communications
intended for one or more remote client application recipients into a single
reply envelope” for S-CAM systems. Id.
The Examiner finds that Vengroff discloses the disputed limitation.
Ans. 31—32. More specifically, the Examiner finds Vengroff discloses that
“incoming communications intended for client applications are recognized
based on their name, unique identifiers, named references, URLs etc. The
communications are requests for information and/or functionality from the
remote network service(s) that are specified by the client applications.” Id.
(citing Vengroff 10, 26, 35). The Examiner finds Vengroff, thus,
discloses “the ability to identify unique identifiers and functionalities from
remote sources in communications sent at a predetermined time and/or in
response to requests from the client applications.” Ans. 32. The Examiner
concludes that this ability “is equivalent to determining progress of the
distributed business process toward completion based on the notifications.”
Id.
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We are persuaded by Appellant’s arguments. We agree that the cited
portions of Vengroff fail to disclose determining progress of a distributed
business process toward completion, in accordance with the disputed
limitation. Vengroff H 10, 26, 35. In addition, the Examiner’s finding that
the disclosed ability to identify unique identifiers and functionalities from
remote sources is equivalent to the disputed limitation is unsupported by the
record evidence.
Accordingly, we do not sustain the Examiner’s § 102 rejections of
independent claims 1, 8, and 12, as well as (i) claims 2—11 and 20 and
(ii) claims 13 and 14, which depend from one of these independent claims.
We also do not sustain the Examiner’s § 103 rejection of claims 12—14
because the Examiner relies on the above discussed findings as to the
disputed limitation for the rejection.
DECISION
We affirm the Examiner’s § 101 rejection of claims 1—14 and 20.
We reverse the Examiner’s § 102 rejection of claims 1—11 and 20.
We reverse the Examiner’s § 102 rejection of claims 12—14.
We reverse the Examiner’s § 103 rejection of claims 12—14.
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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