Nally, Martin P. et al.

Patent Trials and Appeals Board

Feb 26, 2020

11405874 - (D) (P.T.A.B. Feb. 26, 2020)

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.
11/405,874 04/18/2006 Martin P. Nally RSW920050201US1 3206
37945 7590 02/26/2020
DUKE W. YEE
YEE AND ASSOCIATES, P.C.
P.O. BOX 190809
DALLAS, TX 75219
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN P. NALLY and JAMES E. RUMBAUGH
____________

Appeal 2019-001883
Application 11/405,874
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15–17, 20–22, 24–26, 29–32, 34, and
36. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation of Armonk, New York. (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
The Appellants’ claimed invention relates to a method and apparatus
for graphically depicting a behavior as a global process graph and
transforming the global process flow graph into a collection of local
processes (Spec., para. 3). Claim 15, reproduced below with the italics
added, is representative of the subject matter on appeal.

15. A computer implemented method of transforming a global
transaction into a plurality of local processes that are deployed to
servers to execute the global transaction, the computer
implemented method comprising:
a processor receiving a global process flow graph that describes
the global transaction as a network of actions and flows that are
performed by the servers, wherein a role of a server describes
a behavior of the server, and assigning each of the actions performed
within the global transaction to a specific role for execution by a
specific server without regard to details of message interactions
used to coordinate activities between roles and between servers in
different roles, and wherein a conceptual flow of data and control
between the actions is represented in the global process flow
graph;
the processor generating, from the global process flow graph,
the plurality of local processes by allocating respective actions
residing in each specific role to a local process associated with that
role, wherein the plurality of local processes is created by the
processor auto-generating executable message interactions between
the different roles, wherein each of the different roles comprises one
or more servers executing the actions of the global transaction, and
wherein the executable message interactions control execution of the
assigned actions by the different roles that are represented in the
global process flow graph; and
the processor deploying the plurality of local processes to their
respective servers to execute the global transaction.

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THE REJECTION
The following rejection is before us for review:
Claims 15–17, 20–22, 24–26, 29–32, 34, and 36 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 11–14). The
Appellants also argue the claim is both an improvement to underlying
computer technology and rooted in technology (App. Br. 9 ̶11; Reply Br.
4 ̶6). The Appellants argue further that the claim is “significantly more”
than the alleged abstract idea (App. Br. 14–16).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–14; Ans. 3–18).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification sets forth the invention as including a method for
graphically depicting a behavior as a global process graph and transforming
the global process flow graph into a collection of local processes (Spec.,
para. 3). Here, the Examiner has determined that the claim recites depicting
a process/behavior as a flow graph and sets forth a method of organizing
human activities and a fundamental economic practice which is an abstract
idea (Final Act. 9). We agree with the Examiner. We determine that the
claim sets forth the subject matter in italics in the claim above which
describes the concept taking a process flow graph and assigning actions to
specific local sub-processes to execute the process which is a certain method
of organizing human activity and fundamental economic practice, i.e. a
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judicial exception. In Accenture Global Servs. v. Guidewire, 728 F.3d 1336,
1342 (Fed. Cir. 2013) claims for “generating tasks to be performed in an
insurance organization” were held to be an abstract concept. See Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where
collecting information, analyzing it, and displaying results from certain
results of the collection and analysis was held to be an abstract idea.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “a processor receiving a
global process flow graph”; [2] “assigning each of the actions performed
within the global transaction to a specific role for execution by a specific
server”; [3] “the processor generating, from the global process flow graph,
the plurality of local processes by allocating respective actions residing in
each specific role to a local process …wherein each of the different roles
comprises one or more servers executing the actions of the global
transaction”; and [4] “the processor deploying the plurality of local
processes to their respective servers to execute the global transaction are
merely steps performed by a generic computer that do not improve computer
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functionality. That is, these recited steps [1]–[4] “do not purport to improve
the functioning of the computer itself” but are merely generic functions
performed by a conventional processor. Likewise, these same steps [1]–[4]
listed above do not improve the technology of the technical field and merely
use generic computer components and functions to perform the steps. Also,
the recited method steps [1]–[4] above do not require a “particular machine”
and can be utilized with a general purpose computer, and the steps
performed are purely conventional. In this case the general purpose
computer is merely an object on which the method operates in a
conventional manner. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited steps
[1]–[4] fail to provide meaningful limitations to limit the judicial exception
and rather are mere instructions to apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
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understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
paragraphs 23 and 74 for example describes using conventional computer
components such as memory, networks, and personal computers in a
conventional manner. The claim specifically includes recitations for a
processor to implement the method recites use in a manner that is well-
understood, routine, and conventional in the field. Here, the claimed generic
computer components which are used to implement the claimed method are
well understood, routine, or conventional in the field. The Appellant has not
demonstrated that the computers described in the Specification at paragraph
74 for instance are not general purpose computer components known to
perform similar functions in a well-understood manner. Here, the claim has
not been shown to be “significantly more” than the abstract idea.
The Appellant at page 10 of the Appeal Brief have also cited
to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract but the claims in that case were not similar in
scope to those here and were in contrast directed to a self-referential data
table. The Appellant cites to DDR Holdings, LLC v. Hotels, L.P., 773 F. 3d
1245 (Fed. Cir. 2014) and argue that the claim is “rooted in computer
technology” (Appeal Br. 10, 11). We disagree as the Appellant has not
shown how the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
routine, conventional, and generic manner.
For these above reasons, the rejection of claim 15 is sustained. The
same arguments have been presented for independent claims 20 and 24
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which are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.
The Appellant provided separate arguments for dependent claims 16,
17, and 32 as each providing “significantly more” than the abstract concept.
(Appeal Br. 18, 19). With regard to claim 16, the Appellant argues that the
“send/receive action generation that accommodates inter-role transitioning”
is not standard or routine. With regard to claim 17, the Appellant argues that
the “restricted visibility” is not standard or routine. With regard to claim 32,
the Appellant argues that claim data transformation process provides an
inventive concept pertaining to how newly formed processes are able to
communicate via the newly inserted message link and that the claim is
“significantly more” than the abstract concept. We have reviewed the
arguments in light of the subject matter of each of the respective claims 16,
17, and 32 but do not find the arguments persuasive. Each of claims 16, 17
and 32 contains method steps that can be performed by a conventional
processor in a generic manner and the argued claimed subject matter has not
been shown to transform each respective claim into “significantly more”
than the abstract idea identified above. For these reasons, the rejection of
dependent claims 16, 17, and 32 is sustained. The Appellant has provided
the same arguments for the remaining dependent claims drawn to similar
subject and the rejection of these claims is sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 15–17, 20–22, 24–26, 29–32, 34, and 36 are rejected
under 35 U.S.C. § 101.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–17, 20–
22, 24–26,
29–32, 34,
and 36
101 Eligibility 15–17, 20–
22, 24-26,
29–32, 34,
and 36

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED