Oracle International Corporation

Patent Trials and Appeals Board

Nov 3, 2020

14499372 - (D) (P.T.A.B. Nov. 3, 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.
14/499,372 09/29/2014 Matthew Michael JONES 2011-0366US01 1004
74739 7590 11/03/2020
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MICHAEL JONES,
MANJU OMPRAKASH JUNEJA, KARTHIK GNANAMURTHY,
KALASAGAR KANDIKUPPA, JASON YUN WEI SHEU,
WILLIAM EDWIN RUDGE V, GOVINDA RAO HADAGALI,
SAKET SHARAN RAWAT, VISHAL BERRY, DEEPAK AGRAWAL,
PADMAPRIYA PARTHASARATHY,
PAVANKUMAR ANNAPRAGADA NAGA VENKATA,
KATHLEEN MARY GAHAN, MANEESH KUMAR, and
SUSAN ELIZABETH FLIERL
Appeal 2020-002895
Application 14/499,372
Technology Center 3600
Before BARBARA A. PARVIS, LINZY T. McCARTNEY, and
JASON M. REPKO, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Oracle International
Corporation. Appeal Brief 2, filed September 19, 2019 (Appeal Br.).
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BACKGROUND
This patent application concerns managing “consigned inventory,”
that is, inventory that one party possesses but another owns. See
Specification ¶¶ 4, 18, Abstract, filed September 29, 2014 (Spec.). Claim 1
illustrates the claimed subject matter:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to manage consigned inventory, the
managing comprising:
consuming by a buyer at least one consigned inventory
item of the consigned inventory, wherein the consigned
inventory is owned by a supplier and in possession of the buyer
in response to a consignment purchase order between the
supplier and the buyer, the consignment purchase order
comprising consignment terms, purchasing terms and
provisional pricing terms for the inventory wherein a blanket
purchase agreement exists between the supplier and the buyer
and the consignment purchase order does not reference the
blanket purchase agreement;
generating at a buyer device corresponding to the buyer a
data model object that represents a consumption advice that
indicates consigned inventory that was consumed by the buyer
during a specific period of time and is different from the
consignment purchase order, in response to the consumption of
the at least one consigned inventory item during the specific
period of time, wherein the data model object that represents the
consumption advice references the consignment purchase order
and a receipt, and wherein the data model object is then stored as
a new database column or new database table, wherein the
consumption advice indicates consumed consigned inventory
and is not modeled as a release against the blanket purchase
agreement; and
communicating by the buyer device the consumption
advice to a supplier device corresponding to the supplier,
wherein the communicating further comprises transmitting the
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data model object that represents the consumption advice to the
supplier device, and wherein the supplier device, in response to
receiving the consumption advice, can automatically modify
ownership values corresponding to the consumption of the at
least one consigned inventory item during the specific period of
time;
wherein the consumption advice comprises at least one of:
a consumption advice number; a business unit; an inventory
organization; a supplier; a supplier site; a start date; or an end
date;
wherein the consumption advice comprises one or more
consumption advice lines; and
wherein a consumption advice line comprises a
consumption transaction.
Appeal Br. 12–13.
REJECTION
Claims 35 U.S.C. § References/Basis
1–20 101 Eligibility
DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments, and Appellant has not persuaded us that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 2–5 of the Final Office Action mailed
April 18, 2019 (Final Act.), the continuation sheet of the Advisory Action
mailed July 19, 2019 (Advisory Act.), and pages 3–8 of the Examiner’s
Answer mailed January 8, 2020 (Ans.).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
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Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent and Trademark Office has revised its guidance about this
framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is directed to an abstract idea, we
evaluate (1) whether the claim recites subject matter that falls within one of
the abstract idea categories listed in the Revised Guidance, and if so,
(2) whether the claim fails to integrate the recited abstract idea into a
practical application. See Revised Guidance, 84 Fed. Reg. at 51, 54; see also
USPTO, October 2019 Update: Subject Matter Eligibility at 1–2, 10–15,
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https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“October SME Update”) (providing additional guidance on determining
whether a claim recites a judicial exception and integrates a judicial
exception into a practical application). If the claim is directed to an abstract
idea, as noted above, we then determine whether the claim has an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56.
With this framework in mind, we turn to the § 101 rejection.
Appellant argues claims 1–20 together for this rejection, so as permitted by
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this ground of rejection
based on claim 1.
Directed To
The Revised Guidance identifies three categories of abstract ideas:
certain methods of organizing human activity, mental processes, and
mathematical concepts. Revised Guidance, 84 Fed. Reg. at 52. The
Examiner determined that each limitation of claim 1 recites subject matter
that falls within the categories of mental processes and certain methods of
organizing human activity. Final Act. 2–5; Ans. 4–5.
Appellant argues that the Examiner erred because the Examiner
determined that abstract ideas are “essentially the entirety of claim 1 without
the recited hardware components and database elements.” Appeal Br. 6.
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Appellant asserts that the Revised Guidance “does not permit the entirety of
the claims to be lumped into” abstract ideas. Appeal Br. 6.
Appellant has not persuaded us that the Examiner erred. Appellant has
not pointed to anything in the Revised Guidance that prohibits identifying
“essentially the entirety of” a claim as an abstract idea. Federal Circuit
precedent and Patent and Trademark Office guidance make clear that claims
can recite only an abstract idea. See, e.g., In re Rudy, 956 F.3d 1379, 1385
(Fed. Cir. 2020) (determining that “the three elements of the claim” at issue
“are each themselves abstract” and thus the “three steps merely repeat the
abstract idea”); October SME Update at 16 (explaining that a rejection
should note, when appropriate, that “there are no additional elements in the
claim”). We thus find this argument unpersuasive. Because Appellant does
not otherwise address the Examiner’s determination that claim 1 recites
abstract ideas, Appellant has not persuaded us that the Examiner erred in this
respect.
The Examiner next determined that claim 1 does not integrate the
recited abstract ideas into a practical application. Final Act. 4–5; Ans. 5–6.
As part of this determination, the Examiner identified three additional
elements recited in claim 1: “a buyer device,” “wherein the data model
object is then stored as a new database column or new database table,” and
“communicating by the buyer device the consumption advice to a supplier
device.” See Final Act. 4. The Examiner determined that these elements
represent “a generic arrangement of elements” that perform “generic
functions . . . to implement” the recited abstract ideas. Ans. 5. The Examiner
determined that the additional elements do not “transform the abstract
idea[s] into a patent eligible application of the abstract idea[s]” because the
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elements “amount to nothing more than mere instructions to implement or
apply the abstract idea[s] using conventional technology.” Final Act. 5.
Appellant argues that claim 1 integrates the recited abstract ideas into
a practical application because “the recited elements of the claims, in
combination, provide novel technical improvements over known inventory
management systems.” Appeal Br. 6. According to Appellant, “use of the
data model and the novel consumption advice” recited in claim 1 “allow[s]
users to transfer inventory between organizations without having to take
ownership of consigned inventory.” Appeal Br. 7 (quoting Spec. ¶ 43).
Appellant also asserts the recited data model and consumption advice allow
“the consigned inventory management system [to] automatically identify
and reverse [an] original consumption transaction . . . to return an associated
quantity of the owned inventory to a consigned status.” Appeal Br. 8
(quoting Spec. ¶ 44) (emphasis omitted); see also Reply Brief 2–3, filed
March 9, 2020 (making similar arguments).
Appellant fails to persuade us that the Examiner erred. As determined
by the Examiner, other than the identified abstract ideas, claim 1 recites
generic hardware and software that perform generic functions. The
additional elements identified by the Examiner include a buyer device,
storing a data model object representing consumption data as a new database
column or database table, and sending the consumption advice to a supplier
device. See Final Act. 5; Appeal Br. 12. The written description does not
expressly disclose either a buyer device or a supplier device, but the written
description teaches that the disclosed invention uses generic computer
components to perform the recited functions. See, e.g., Spec. ¶¶ 21–25
(describing a system that can implement an embodiment of the disclosed
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invention), 28 (explaining that the functions shown in the accompanying
figures can be performed “by software stored in a memory or some other
computer-readable or tangible medium, and executed by a processor . . . . or
any combination of hardware and software”), Fig. 1 (showing a system that
can implement an embodiment of the disclosed invention). The written
description also teaches that the database referenced in claim 1 can be any
“database known in the art.” Spec. ¶ 25. As for the storing and
communicating functions performed by these components, it is beyond
reasonable dispute that storing data in known databases and transmitting
data from one computer component to another are generic computer
functions. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1334 (Fed. Cir. 2015) (determining that storing pricing information in a data
source is a well-understood, routine, and conventional activity); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
Considering the additional elements in claim 1 along with the
limitations that recite an abstract idea, both individually and as an ordered
combination, we agree with the Examiner that claim 1 does not integrate the
abstract ideas into a practical application. Any improvement reflected in
claim 1 is at most an improvement to the recited abstract ideas, not
technology as asserted by Appellant. The claimed invention simply uses
generic hardware and software that perform generic functions to implement
the recited abstract ideas. Using generic hardware and software in this way
does not integrate the abstract ideas into a practical application. See, e.g.,
Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is
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not generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)
(second and third alterations in original)).
Inventive Concept
Finally, the Examiner determined that claim 1 lacks an inventive
concept. See Final Act. 5. The Examiner found that the additional elements
recited in claim 1 “amount[] to no more than[] mere instructions to
implement the idea on a computer functioning in a standard mode of
operation or matters that are routine and conventional in the field.” Final
Act. 5. The Examiner determined that the additional elements thus do not
“amount to significantly more than the abstract idea[s].” Final Act. 5.
Appellant contends that the Examiner erred because the Examiner did
not provide evidence “that the combination of functional elements
implemented by software . . . is conventional.” Appeal Br. 8–9 (emphasis
omitted). Appellant contends that the consuming, generating, and
communication steps recited in claim 1 include “functional elements . . . that
resulted in all claims being allowable over the prior art which provides at
least some evidence that these elements are” unconventional. Appeal Br. 9.
Appellant again fails to persuade us that the Examiner erred. Under
Patent and Trademark Office guidance, examiners can rely on court
decisions and prior art publications (among other things) to show that an
additional element is well-understood, routine, and conventional. See
USPTO, Memorandum on Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) at 3–4 (Apr. 19, 2018), available at
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https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF. That is what the Examiner did here. See, e.g., Final Act. 3
(relying on the court decisions discussed in Manual of Patent Examining
Procedure § 2106.05(d)(ii) to show that the additional elements are well
understood, routine, and conventional); Advisory Act. continuation sheet
(same); Ans. 6–8 (citing court decisions and a published United States patent
application to establish that the additional elements are well understood,
routine, and conventional). Appellant does not meaningfully address this
evidence and therefore has not persuaded us that the Examiner erred.
As for Appellant’s argument that certain “functional elements” in
claim 1 are not well understood, routine, and conventional, except for the
communicating and storing functions addressed above, these elements form
part of the identified abstract ideas and thus are not part of the well-
understood, routine, and conventional analysis. See, e.g., Bridge & Post, Inc.
v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed. Cir. 2019) (“At
Alice step two we assess ‘whether the claim limitations other than the
invention’s use of the ineligible concept to which it was directed were well-
understood, routine, and conventional.’” (quoting BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018))); BSG Tech, 899
F.3d at 1290 (“[T]he relevant inquiry is not whether the claimed invention as
a whole is unconventional or non-routine. . . . It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” (first emphasis added)).
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For at least the above reasons, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting representative claim 1
under § 101. We therefore sustain this rejection.
CONCLUSION
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

No 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