Ex Parte ZUMWALT et al

Patent Trials and Appeals Board

Mar 18, 2019

13490927 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/490,927 06/07/2012
74739 7590 03/20/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Russell ZUMWALT
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.
2011-0 l 62USO 1 6549
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL ZUMWALT and NICOLE DALESSIO
Appeal2017-003432
Application 13/490,927 1
Technology Center 3600
Before J. JOHN LEE, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4--8, 10-14, 16-20, 25, and 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify Oracle International Corporation as the real party
in interest. Appeal Br. 3.
Appeal2017-003432
Application 13/490,927
ILLUSTRATIVE CLAIM
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to update a project management system, the
updating comprising:
storing project management data for a plurality of
projects in a database coupled to a server coupled to a network;
receiving, at the server, a request for a list of assigned
tasks to a user, from a user computer coupled to the network,
the request comprising a first email from an email address of
the user, a subject line of the first email including an assigned
task status, a time period and a time period value, the assigned
task status indicating whether a task assigned to the user is
active, due, overdue, completed, or starting, and the time period
indicating whether the time period value precedes the date of
the email for an active, overdue, or completed assigned task
status, or succeeds the date of the email for an active, due, or
starting assigned task status;
in response to the request,
applying a filter to the database to determine the
list of assigned tasks to the user based on the assigned
task status, the time period and the time period value,
each task in the list of assigned tasks being associated
with a project,
creating a second email including the list of
assigned tasks to the user, a body of the second email
including at least one project section, each project section
including a project name and at least one task from the
list of assigned tasks, each task including at least one of a
start date value, a finish date value, a finished status
value or an activity percent completed value, and
sending, from the server to the user email address,
the second email;
receiving, at the server, a third email from the user email
address, a body of the third email including at least one updated
project section including at least one updated task, each updated
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Application 13/490,927
task including at least one updated start date value, finish date
value, finished status value or activity percent completed value;
parsing the third email body to retrieve the updated
values in each updated task in each updated project section;
applying the updated values from each updated task to
each associated project stored in the database;
creating an acknowledgement email based on the updated
values applied to each associated project stored in the database,
a body of the acknowledgement email including at least one
updated project section, each updated project section including
the project name and at least one updated task, each updated
task including at least one updated start date value, finish date
value, finished status value or activity percent completed value;
and
sending, from the server to the user email address, the
acknowledgement email.
REJECTION2
Claims 1, 2, 4--8, 10-14, 16-20, 25, and 26 are rejected under
35 U.S.C. § 101 as ineligible subject matter. 3
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
2 The Final Office Action (pages 7-35) also included rejections under
35 U.S.C. §§ 103 and 112. These rejections are withdrawn. Answer 2-3.
3 The identified rejected claims reflect the changes in Appellants'
Amendment After Final Action ( dated March 11, 2016), which the Examiner
has entered, per the Advisory Action (dated April 13, 2016).
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Application 13/490,927
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply'" these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
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Application 13/490,927
to" an abstract idea, only if the claim recites any of ( 1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 52-55. A claim so "directed to"
an abstract idea constitutes ineligible subject matter, unless it recites an
additional element ( or combination of elements) amounting to significantly
more than the abstract idea. Id. at 56.
With regard to the first step of the Alice framework, the Examiner
states that "the claims are directed to updating a project management
system," which the Examiner regards as an abstract idea, because it is
among "certain methods of organizing human activity, such as processing
loan information, [that] are ineligible abstract ideas." Final Action 6.
Further, the Examiner states that the claimed subject matter "could be
executed mentally or on paper." Answer 4. As to the second step of the
Alice framework, the Examiner states that the claims do not include
additional elements amounting to significantly more than the identified
abstract idea. Final Action 6-7, Answer 5-6.
Notwithstanding the propriety of the Examiner's determination as to
whether the claims are directed to the identified abstract idea, we agree with
the Appellants' argument that the Examiner fails to show adequately that the
additional elements would not amount to significantly more than the abstract
idea. See Appeal Br. 11-15, Reply Br. 4--5.
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The inquiry into whether additional claim elements - i.e., claim
elements other than those that describe any judicial exception to which a
claim might be directed - amount to significantly more than the judicial
exception itself considers whether the claim limitations "involve more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) (quoting Alice, 573 U.S. at 225). Further, this step "requires more
than recognizing that each claim element, by itself, was known in the art,"
because "an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces." BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016). Notably, "[w]hether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).
Although the Examiner states that the claims call for additional
elements that, individually, "perform generic computer functions that are
well-understood, routine and conventional activities previously known to the
industry" (Final Action 7), the Examiner has not sufficiently supported a
determination that the claimed ordered combination of these additional
elements fails to constitute significantly more than the abstract idea itself
(see Answer 5---6).
With regard to the second step of the Alice framework (Step 2B in the
parlance of the 2019 Revised Guidance), the Final Office Action refers to the
following particular "limitations of exemplary claim 1 ":
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"storing project management data," "receiving a request for a
list," "applying a filter to the database," "creating a second
email," "sending ... the second email," "receiving ... a third
email," "parsing the third email body," "applying the update[ d]
values," "creating an acknowledgement email," and "sending
... the acknowledgment email[,]"
and states that "[t]hese limitations are steps for creating a list of tasks and
communicating the tasks that do not add significantly more than the abstract
idea of updating a project management system." Final Action 6-7.
The Appellants argue that the Examiner "has failed to consider the
combination of these additional elements" and quote the USPTO' s Guidance
Memorandum of May 4, 2016 (May 2016 Guidance), which states:
It is important to remember that a new combination of steps in a
process may be patent eligible even though all the steps of the
combination were individually well known and in common use
before the combination was made ([Diamond v. Diehr, 450 U.S.
175 (1981)]). Thus, it is particularly critical to address the
combination of additional elements, because while individually-
viewed elements may not appear to add significantly more,
those additional elements when viewed in combination may
amount to significantly more than the exception by
meaningfully limiting the judicial exception.
Appeal Br. 13-14 (quoting May 2016 Guidance at 3).
In response, the Examiner's Answer states: "Although the Appellant
contends that the limitations, when taken together, meaningfully limit the
alleged abstract idea, the idea is still abstract." Answer 6. Yet, in the second
step of the Alice framework, the proper inquiry does not ask whether "the
[abstract] idea is still abstract," as the Examiner states (id.); indeed, such an
assertion would be established by the first step of the Alice framework.
Rather, the inquiry of the second Alice step focuses on whether any
additional claim elements - considered individually and in combination -
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constitute more than well-understood, routine, and conventional features.
See Content Extraction, 776 F.3d at 1347--48. Critically, the USPTO
Guidance dated April 19, 2018 (April 2018 Guidance) addresses the
requisite factual determinations for such a rejection, explaining that
an additional element ( or combination of elements) is not well-
understood, routine or conventional unless the examiner finds,
and expressly supports a rejection in writing with, one or more
of the following:
1. A citation to an express statement in the specification or
to a statement made by an applicant during prosecution
that demonstrates the well-understood, routine,
conventional nature of the additional element(s). A
specification demonstrates the well-understood, routine,
conventional nature of additional elements when it
describes the additional elements as well-understood or
routine or conventional ( or an equivalent term), as a
commercially available product, or in a manner that
indicates that the additional elements are sufficiently
well-known that the specification does not need to
describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a). A finding that an element is
well-understood, routine, or conventional cannot be
based only on the fact that the specification is silent with
respect to describing such element.
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05( d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ). An appropriate publication could include a
book, manual, review article, or other source that
describes the state of the art and discusses what is well-
known and in common use in the relevant industry. It
does not include all items that might otherwise qualify as
a "printed publication" as used in 35 U.S.C. § 102.
Whether something is disclosed in a document that is
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considered a "printed publication" under 3 5 U.S.C.
§ 102 is a distinct inquiry from whether something is
well-known, routine, conventional activity. A document
may be a printed publication but still fail to establish that
something it describes is well-understood, routine,
conventional activity .... The nature of the publication
and the description of the additional elements in the
publication would need to demonstrate that the additional
elements are widely prevalent or in common use in the
relevant field, comparable to the types of activity or
elements that are so well-known that they do not need to
be described in detail in a patent application to satisfy 35
U.S.C. § 112(a). For example, while U.S. patents and
published applications are publications, merely finding
the additional element in a single patent or published
application would not be sufficient to demonstrate that
the additional element is well-understood, routine,
conventional, unless the patent or published application
demonstrates that the additional element are widely
prevalent or in common use in the relevant field.
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s). This option should be used only
when the examiner is certain, based upon his or her
personal knowledge, that the additional element(s)
represents well-understood, routine, conventional activity
engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do
not need to be described in detail in a patent application
to satisfy 35 U.S.C. § 112(a). Procedures for taking
official notice and addressing an applicant's challenge to
official notice are discussed in MPEP § 2144.03.
April 2018 Guidance at 3--4 (footnote omitted). In the present Appeal, the
rejection lacks sufficiently supported findings, and thus is unable to satisfy
the above-identified portion of the April 2018 Guidance. A sustainable
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rejection must demonstrate that the identified ordered combination of
additional claim elements (see Final Action 6) - being considered in the
second Alice step - exists in one or more of the enumerated evidentiary
sources (see April 2018 Guidance at 3--4) in order to establish such
combination as well-understood, routine or conventional. For example, an
adequately supported rejection should consider whether the combination of
claim 1 's recited "applying a filter to the database," "creating a second
email," "parsing the third email body," "applying the updated values from
each updated task to each associated project stored in the database," and
"creating an acknowledgement email based on the updated values applied to
each associated project stored in the database" together are, as a factual
matter, well-understood, routine or conventional.
Accordingly, we are persuaded that the Examiner has not adequately
established that the claims on appeal would not survive the second step of
the Alice framework. Therefore, we do not sustain the rejection of claims 1,
2, 4--8, 10-14, 16-20, 25, and 26 under 35 U.S.C. § 101.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 2, 4--8,
10-14, 16-20, 25, and 26 under 35 U.S.C. § 101.
REVERSED
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