Patrick J. O'Sullivan et al.

Patent Trials and Appeals Board

Feb 24, 2020

11566718 - (D) (P.T.A.B. Feb. 24, 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.
11/566,718 12/05/2006 Patrick J. O'Sullivan CAM920060126US1_8150-0022 6476
52021 7590 02/24/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK J. O’SULLIVAN, EDITH H. STERN,
ROBERT C. WEIR, and BARRY E. WILLNER
____________

Appeal 2018-003166
Application 11/566,718
Technology Center 3600
____________

Before MICHAEL W. KIM, MURRIEL E. CRAWFORD, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a method for modifying behavior in messaging
systems according to organizational hierarchy. (Spec. ¶ 3, Title).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as IBM
Corporation. (Appeal Br. 1).
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Claim 1 is representative of the subject matter on appeal.
1. A method of modifying behavior of
an electronic messaging system comprising:
via a processor, receiving a message from a
sender;
via the processor, determining that the
message is associated with a workflow;
via the processor, identifying a position of
the sender within an organizational hierarchy; and
via the processor, initiating the workflow
associated with the message according to the
position of the sender.

THE REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–4, 6, and 11–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schutzman (US 5,627,764, issued May 6, 1997) in view
of Du (US 6,308,163 B1, issued October 23, 2001).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schutzman in view of Du in further view of Hazarika (US 2005/0204009
A1, published September 15, 2005).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schutzman in view of Du in further view of Minyailov (US 7,571,180 B2,
issued August 4, 2009).
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Schutzman in view of Du in further view of Hughes (John A. Hughes et
al., Proceedings of the Fifth European Conference on Computer Supported
Cooperative Work, Kluwer Academic Publishers, 348 (1997)).
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Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schutzman in view of Du in further view of McVeigh (US
2007/0094248 A1, published April 26, 2007).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . .
determine whether the claims at issue are directed
to one of those patent-ineligible concepts. . . . If
so, . . . then ask, “[w]hat else is there in the claims
before us?” . . . To answer that question, . . .
consider the elements of each 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. . . . [The Court] described
step two of this analysis as a search for 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted) (first and last alterations in original).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claim 1 is directed to a method of
modifying behavior of an electronic messaging system which is considered
to set forth the judicially recognized exception of an abstract idea (Final Act.
11). The Examiner determines that the claim recites a certain method of
organizing human activities and recites generating rule-based tasks for
processing a claim and is further exemplified as obtaining and comparing
intangible data. (Final Act. 11). The Examiner finds that the additional
elements or combination of elements in the claim other than the abstract idea
amounts to no more than mere instructions to implement the idea on a
computer and/or recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
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conventional activities previously known to the pertinent industry. (Final
Act. 12).
The Specification discloses that the invention relates to a method of
modifying behavior of an electronic messaging system which includes
receiving a message from a sender and determining that the message is
associated with a workflow. (Spec. ¶ 3). The workflow associated with the
message is initiated according to the position of the sender in an
organizational hierarchy. (Spec. ¶ 4). The organizational hierarchy can
specify the position of the various users, e.g., members or employees, of a
given organization. Examples of the type of workflow initiated by the
method are: automatically illuminating the message in a desired color
according to the position of the party to the message, creating automatic to-
do’s in the messaging client of the recipient, forcing intrusive reminders,
escalate aggressiveness of reminders as a deadline approaches, preventing
deletion of the message until the requested action is performed, etc. (Spec.
¶ 49). As such, the Specification supports the Examiner’s determination that
the claim recites a method of modifying behavior of an electronic messaging
system.
Consistent with this disclosure, claim 1 recites “receiving a message
from a sender,” “determining that the message is associated with a
workflow,” “identifying a position of the sender within an organizational
hierarchy,” and “initiating the workflow associated with the message.”
The invention, as exemplified by the above-recited claim limitations,
manages interactions or relationships between members of an organization
by initiating workflow based on the position of the sender. The method of
claim 1 is a certain method of organizing human activities because it relates
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to managing interactions between people in an organization. Guidance, 84
Fed. Reg. at 52.
We thus agree with the Examiner’s findings that the claims are
directed to a certain method of organizing human activity.
Also, we find the steps of “receiving a message” (receiving
information or data), “determining that the message is associated with a
workflow” (analyzing information or data), and “identifying a position of the
sender” (analyzing information or data) constitute “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 Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, we agree that
claim 1 recites the judicial exception of obtaining and comparing intangible
data which is a mental process.
Turning to the second prong of the “directed to test”, claim 1 merely
requires a “processor.” The recitation of the word “processor” does not
impose “a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification,
nor does Appellant direct us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
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functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the Guidance. See Guidance, 84 Fed. Reg. at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the processor or other technology, does not recite a particular
machine or manufacture that is integral to the claims, and does not transform
or reduce a particular article to a different state or thing. Id. Thus, claim 1
is directed to a judicial exception that is not integrated into a practical
application and thus is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we determine
that claim 1 sets forth an abstract idea, claim 1 must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
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The introduction of a computer or processor into the claims does not
alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is 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.”
Alice, 573 U.S. at 223–24 (all except first alteration in original) (citations
omitted).
Instead, “the relevant question is whether the claim[] here do[es] more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
processor at each step of the process is purely conventional. Using a
processor to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer/processor
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functions are well-understood, routine, conventional activities previously
known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
Considered as an ordered combination, the computer component of
Appellant’s claim 1 adds nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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Claim 1 does not, for example, purport to improve the functioning of
the processor itself. As we stated above, claim 1 does not affect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. Specifically, the Specification discloses that the processor recited
in claim 1 may be a computer or any instruction execution system or a
general purpose computer. (See, e.g., Spec. ¶¶ 10, 11, 17). Thus, the claims
at issue amount to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 8–15; Reply Br. 2–
4) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that modifying an electronic messaging system does
not involve organizing human activities. Although claim 1 does recite
modifying an electronic messaging system, the focus of the claims as
disclosed in the Specification is to manage interactions between members of
an organization, in that certain workflow is initiated based on the position of
the sender. In this regard, the workflow that is initiated, such as
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automatically illuminating the message, creating automatic to-do’s in the
messaging client of the recipient, forcing intrusive reminders, preventing
deletion of messages until requested action is performed is clearly directed
to organizing the activities of the human recipient of the message. In any
case, the Examiner has also determined that the claim is directed to a mental
process of obtaining and comparing intangible data. Therefore, even if the
Appellant is correct that claim 1 is not directed to organizing human
activities, claim 1 would still be directed to an abstract idea on this
alternative basis.
We do not agree with Appellant that the claims are necessarily rooted
in computer techonology and are analogous to the claims in DDR Holdings.
(Appeal Br. 11). In DDR Holdings, the Court evaluated the eligibility of
claims “address[ing] the problem of retaining website visitors that, if
adhering to the routine, conventional functioning of Internet hyperlink
protocol, would be instantly transported away from a host’s website
after ‘clicking’ on an advertisement and activating a hyperlink.” DDR, 773
F.3d at 1257. There, the Court found that the claims were patent eligible
because they transformed the manner in which a hyperlink typically
functions to resolve a problem that had no “pre-Internet analog.” Id. at
1258. The Court cautioned, however, “that not all claims purporting to
address Internet-centric challenges are eligible for patent.” Id. For
example, in DDR Holdings the Court distinguished the patent-eligible
claims at issue from claims found patent-ineligible in Ultramercial. See
DDR, 773 at 1258–59 (citing Ultramercial, 772 F.3d a t 715–16). As
noted there, the Ultramercial claims were “directed to a specific method of
advertising and content distribution that was previously unknown and
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never employed on the Internet before.” Id. at 1258 (quoting
Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims were
patent ineligible because they “merely recite[d] the abstract idea of
‘offering media content in exchange for viewing an advertisement,’ along
with ‘routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” Ultramercial, 772 F.3d at 712. Similarly, Appellant’s asserted
claims recite receiving, analyzing, modifying, and transmitting data. This
is precisely the type of Internet activity found ineligible in Ultramercial.
We agree with the Examiner that the invention as a whole can be done by a
human, mentally or by pen and paper, and does not solve problems
specifically arising in some aspect of computer technology, nor is it solving
an Internet centric problem, but rather the computer in the instant claims is
used as a mechanism to improve efficiency. (Ans. 5).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims do more than “simply instruct” one to
implement collecting data, analyzing the collected data, and displaying
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certain results of the collection on a generic computer because the claimed
invention involves computer initiation of a workflow based upon a received
electronic message.. (Appeal. Br. 14). We find that the Examiner properly
considers the elements of claim 1 that are not included in the abstract idea
(computer initiation of workflow and finds that claim 1 does not recite
significantly more than the abstract idea because the steps of claim 1 may be
performed by a generic computer.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. §101. We will also sustain this rejection as it is
directed to the remaining claims because Appellant has not argued the
separate eligibility of these claims.

35 U.S.C. § 103 REJECTION
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “initiating the workflow associated with
the message according to the position of the sender,” as recited in
independent claim 1.2 The Examiner relies on Du at col. 5, line 65–col. 6,
line 11; col. 10, lines 58–65; col. 11, line 53– col. 12, line 20; and col. 14,
line 56–col. 15, line 9 for teaching this subject matter. (Ans. 11). We have
reviewed these portions of Du and find no disclosure therein of a workflow
initiated according to the position of the sender. Column 5, line 65 to
column 6, line 11 discloses that Global Resource Managers (“GRM”) can

2 Similarly, independent claim 11 recites “wherein the workflow is initiated
according to a position of the sender within the organizational hierarchy,”
and “independent claim 14 recites “computer-usable program code that
initiates the workflow associated with the message according to the position
of the sender,”
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send messages to lower level GRMs, but discloses nothing about initiating a
workflow according to the position of the sender of a message. Column 10,
lines 58–65 discloses that the work flow management system (WFMS)
controls the process, by identifying what needs to be run and in which order
and by whom, and uses business process rules to identify what the next
process activity is, and which resource should carry out the process, but does
not disclose initiating a workflow according to the position of the sender of a
message. Column 11, line 53 to column 12, line 20 discloses that each
resource type in a hierarchy of a particular resource manager is associated
with four fields. The third field is a REFER_ADDR (address) field, which
includes information about a same level resource manager that can satisfy a
request and the fourth field is a PLEAD_ADDR (address) of a resource
manager at a higher level that can satisfy a request. This is a disclosure
about an organization hierarchy and the assignment of task, but is not a
disclosure of initiating a workflow according to the position of the sender of
a message. Finally, column 14, line 56 to column 15, line 9 discloses how
messages and tasks are routed, but does not disclose initiating a workflow
according to the position of the sender of a message.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1 and claims 2–10 dependent therefrom. We will also not
sustain the rejection as it is directed to the remaining claims for the same
reasons.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.
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We conclude the Examiner did err in rejecting claims 1–20 under 35
U.S.C. §103(a).

DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–4, 6, 11–
17
103(a) Schutzman, Du 1–4, 6, 11–
17
5 103(a) Schutzman, Du,
Hazarika
5
7 103(a) Schutzman, Du,
Minyailov
7
8, 18 103(a) Schutzman, Du,
Hughes
8, 18
9, 10, 19, 20 103(a) Schutzman, Du,
McVeigh
9, 10, 19, 20
Overall
Outcome
1–20

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