Oracle International Corporation

Patent Trials and Appeals Board

Jul 20, 2021

2021001201 (P.T.A.B. Jul. 20, 2021)

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.
14/788,536 06/30/2015 Ganesh Naganathan R00003NP 5506
129668 7590 07/20/2021
Invoke / Oracle
30 Wall Street #800
8th Floor
New York, NY 10005
EXAMINER
LEAL, HECTOR
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/20/2021 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):
docketing@InvokeIP.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GANESH NAGANATHAN,
PAMELA WALKER–CLEARY,
ROHAN R. SHETTY, and
JAYAKRISHNAN RADHAKRISHNAN

Appeal 2021-001201
Application 14/788,536
Technology Center 3600

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
JAMES P. CALVE, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3–8, 10–20, and 22–27. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Oracle International Corporation, as the real
party in interest. Appeal Br. 1.
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Application 14/788,536

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THE INVENTION
The claimed subject matter “relates to estimating compensation. In
particular, the present disclosure relates to estimating compensation based
on non-materialized sales entries.” Spec., para. 2. Claim 1 is illustrative,
and is reproduced below:
1. A non-transitory computer readable medium comprising
instructions which, when executed by one or more hardware
processors, causes performance of operations comprising:
receiving, via a graphical user interface (GUI), a first
user input that includes one or more sales entry attributes for at
least one non-materialized sale associated with an individual
salesperson;
generating a first set of non-materialized sales entries
based on the one or more sales entry attributes;
storing the first set of one or more non-materialized sales
entries in a first data object;
detecting addition of a set of one or more materialized
sales entries, associated with the individual salesperson, to a
second data object different than the first data object;
wherein the second data object maintains transactional
sales data as stages of a sales cycle are completed;
wherein at least one of the set of materialized sales
entries is entered into the second data object by an application
rather than directly entered by any user;
responsive to detecting the addition of the set of one or
more materialized sales entries: continually updating and
storing an earned compensation value, for the individual
salesperson, corresponding to the set of materialized sales
entries stored in the second data object;
responsive to a second user input initiating an estimation
process to generate an estimated compensation value:
determining the estimated compensation value, for the
individual salesperson, based on (a) the first set of non-
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Application 14/788,536

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materialized sales entries stored in the first data object and (b)
the previously determined earned compensation value without
accessing the set of materialized sales entries stored in the
second data object; and
concurrently presenting, at the GUI, the estimated
compensation value and the earned compensation value.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gozdeck US 2001/0049622 A1 Dec. 6, 2001
Stiffler US 2014/0324645 A1 Oct. 30, 2014

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 3–8, 10–20, and 22–27 are rejected under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter without significantly
more.
2. Claims 1, 3–8, 10–20, and 22–27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gozdeck and Stiffler.
ANALYSIS
The rejection of claims 1, 3–8, 10–20, and 22–27 is rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter without
significantly more.
We reverse this rejection on procedural grounds.
The briefs mention an “Expert Declaration dated January 24, 2019.”
See e.g., Appeal Br. 11.
According to the record, a Final Rejection was mailed on Nov. 8,
2018. In response, Appellant filed an amendment and reply on Jan. 24,
2019, including a paper entitled “Expert Declaration Under 37 C.F.R.
Appeal 2021-001201
Application 14/788,536

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1.132,” signed by one of the inventors, Ganesh Naganathan, on Jan. 23,
2019. The Declaration is mentioned in several locations in the reply,
beginning on page 10, and relied upon in challenging the pending 101
rejection. Specific paragraphs from the Declaration are cited in support. For
example, on page 10 of the reply, Appellant argues that claim 1 “is directed
to a technical improvement in the data input process for generating an
estimation” and cites para. 6 of the Declaration. The arguments, and the
specific paragraphs from the Declaration cited in support, have been carried
over into the briefs. See e.g., Appeal Br. 8.
However, we have been unable to find in the record before us any
indication that the Declaration has been considered. MPEP § 716 (“It is the
responsibility of the primary examiner to personally review and decide
whether affidavits or declarations submitted under 37 CFR 1.132 for the
purpose of traversing grounds of rejection are responsive to the rejection and
present sufficient facts to overcome the rejection.”)
We recognize that the Declaration was filed for the purpose of
traversing a rejection under 101, rather than a rejection under 102 or 103 as
is more common, but it must be considered nonetheless.
Moreover, whereas here the Declaration is submitted in support of an
argument that, in contradistinction to the Examiner’s position, certain
claimed features are not well–known routine and conventional, “the
examiner should reevaluate whether it is readily apparent that the additional
elements are in actuality well understood, routine, conventional activities to
those who work in the relevant field.” Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.), USPTO Memorandum, Robert W. Bahr,
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Application 14/788,536

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Deputy Commissioner For Patent Examination Policy, April 19, 2018, pp.
3–4. See Appeal Br. 10–11 (“Claim 1 provides specific details on non-
conventional operations—namely, the automatic detection of addition of
materialized sales entries, which thereby triggers continual updating of an
earned compensation value, which is retrieved (in lieu of directly accessing
the materialized sales entries) for determining an estimated compensation
value. See Expert Declaration dated January 24, 2019, ¶ 13.”) See also
Reply Br. 5.
For the foregoing reasons, until the Declaration is considered, it is
premature for us to give the 101 rejection a meaningful review.
For this reason, the rejection is reversed.
The rejection of claims 1, 3–8, 10–20, and 22–27 under 35 U.S.C. § 103(a)
as unpatentable over Gozdeck and Stiffler.
All the claims call for
responsive to detecting the addition of the set of one or
more materialized sales entries:
continually updating and storing an earned compensation
value, for the individual salesperson, corresponding to the set of
materialized sales entries stored in the second data object;
Independent claims 1, 19, and 20.
According to the Examiner, “Gozdeck teaches the above limitations
[but] does not appear to explicitly teach continually updating/storing an
earned compensation value . . . ,” for which Stiffler is relied upon. Ans. 14.
Stiffler also teaches reporting of sales and other business
information through static reports as well as dynamically
created reports in real-time. Not only that, Stiffler teaches
individualized alerts and dashboards that provide users with
“what-” calculations and other dynamic views that provide
insight into business performance (See Stiffler ¶ 57). For
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Application 14/788,536

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example, the compensation calculation system in Stiffler
teaches that data may be pulled from another application
(i.e., detecting materialized sales entries) to use as inputs for
calculations and payment information, as well as providing
compensation reports. Accordingly, Stiffler does teach
continually updating and storing an earned compensation value
by pulling (i.e., detecting) sales data from a database (i.e.,
another application).
Id. at 15 (emphasis added).
Appellant disagrees, arguing that “‘[d]ynamically’ does not
inherently or necessarily convey continually performing calculations
responsive to detecting addition of materialized sales entries, as recited.”
Reply Br. 7.
We agree with Appellant. The claims require “detecting addition of . .
. materialized sales entries” and in response to that action performing the
“continually updating and storing” step. As Appellant argues, the “detecting
addition of . . . materialized sales entries” is a triggering event. Pulling data
from another application to use as inputs for calculations and payment
information, as well as providing compensation reports, as Stiffler is said to
describe, is insufficient to show said triggering event. While inputting data
may lead to a continual updating and storing of certain data, it does not
necessarily follow that the continual updating and storing is triggered by
“detecting” said input.
For the foregoing reason, the rejection is not sustained.

Appeal 2021-001201
Application 14/788,536

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–
20, 22–27
101 Eligibility 1, 3–8, 10–
20, 22–27
1, 3–8, 10–
20, 22–27
103 Gozdeck, Stiffler 1, 3–8, 10–
20, 22–27
Overall
Outcome
1, 3–8, 10–
20, 22–27

REVERSED