Paul Morinville

Patent Trials and Appeals Board

Jul 24, 2019

13244613 - (D) (P.T.A.B. Jul. 24, 2019)

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.
13/244,613 09/25/2011 Paul Morinville IBIG1110-7 9309
38844 7590 07/24/2019
Loveless Law Group, PLLC
4760 Preston Road
Ste 244-357
Frisco, TX 75034
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
eofficeaction@appcoll.com
ryan@lovelesslawgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL V. MORINVILLE
____________________

Appeal 2018-0026021
Application 13/244,613
Technology Center 3600
____________________

Before THU A. DANG, ELENI MANTIS MERCADER, and
MATTHEW J. McNEILL, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–14, 17, and 19–22, which are all the claims pending in
this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies Paul V. Morinville, as the real party in interest. App.
Br. 4.
2 Claims 15, 16, and 18 are canceled. See App. Br. 25–31.
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A. INVENTION
According to Appellant, the invention relates to “systems and methods
for automating business processes.” Spec. ¶ 2. Specifically, multiple
business processes interact “by nesting the information from prerequisite
events into a business process that is dependent on those processes to
interact.” Id. Claims 1, 3, and 12 are the independent claims. Claim 1
illustrates the claimed subject matter and reads as follows:
1. A method for execution of a business process, wherein the
business process is an event-driven activity including first and
secondary events, wherein the method comprises the computer-
implemented automatic steps:

a computer initiating the first event in response to user input;
the first event initiating a first one of the secondary events on the
computer;

while both the first event and the first one of the secondary events
are pending,

the first event making at least a portion of information
processed by the first event available to the first one of the
secondary events prior to completion of the first event,

the first one of the secondary events beginning processing
of the portion of information prior to completion of the
first event, and

the first one of the secondary events communicates with
one or more data sources based upon the processing of the
portion of information made available by the first event;
and

the computer completing one or more of the first event and the
first one of the secondary events to conclude execution of the
business process.
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B. PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Goodall et al. (“Goodall”) US 2003/0149599 A1 August 7, 2003

C. REJECTIONS
Claims 1–14, 17, and 19–22 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3–15.
Claims 1–14, 17, and 19–22 stand rejected under 35 U.S.C. § 112(b)
as indefinite. Final Act. 15–16.
Claims 1–14, 17, and 19–22 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Goodall. Final Act. 17–37.

II. ANALYSIS
Except where indicated, we adopt the Examiner’s findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).

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1. Rejection under 35 U.S.C. § 101
a. Prima facie case of patent eligibility
Appellant contends the Examiner failed to establish a prima facie case
of patent ineligibility with respect to the pending claims, namely, claims 1–
14, 17 and 19–22. See App. Br. 11–14; Reply Br. 4–6.
The Federal Circuit has repeatedly explained that “the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
“PTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.’” In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). The PTO
violates § 132 “when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). But if
the PTO “adequately explain[s] the shortcomings it perceives . . . the burden
shifts to the applicant to rebut the prima facie case with evidence and/or
argument.” Hyatt, 492 F.3d at 1370.
The Examiner’s rejection under §101 satisfies §132 because it reflects
the Alice analytical framework by identifying an abstract idea and finding
the claims do not amount to significantly more than the abstract idea itself
(Non-Final Act. 3–15; Ans. 3–7), thus apprising Appellant of the reasons for
the §101 rejection under that framework. Appellant recognizes the
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Examiner’s Alice analysis and present arguments accordingly. See App. Br.
11–14; Reply Br. 4–6. Appellant does not respond by alleging a failure to
understand the rejection. See id. We are, therefore, not persuaded the
Examiner failed to establish a prima facie case.
b. Two-step framework
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 § 101 to include implicit
exceptions: “[l]aws of nature, natural 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 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
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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 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 (citations 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. (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 PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Revised Guidance”). Under that
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, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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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:
(3) adds a specific limitation beyond the judicial exception that are 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 Revised Guidance.
i. Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Here, claims 1–11, 21, and
22 are drawn to a “method” and recite a number of steps. Accordingly,
claims 1–11, 21, and 22 fall within the process category under §101. Claims
12–14, 17, 19, and 20 are drawn to a “software program product” including
instructions (configured to cause a computer to perform a method) embodied
in a “non-transitory computer-readable medium.” Accordingly, claims 12–
14, 17, 19, and 20 fall within the article of manufacture category under §101.
ii. Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity, or mental processes). See Revised Guidance.
The Examiner concludes the claims are directed to “execution of a
business process,” an abstract idea. Final Act. 8. The Examiner also
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concludes the claims are directed to a method of organizing human activity
because the claims organize or manipulate data and manage a work flow.
Final Act. 10. Appellant does not dispute the abstract ideas found by the
Examiner; rather, Appellant argues that the Examiner has not considered the
claim language with regard to the abstract idea findings. See App. Br. 11–
14; Reply Br. 4–6.
We adopt the Examiner’s findings that the claims recite a certain
method of organizing human activity. We find that the claim language
reciting a “business process” that initiates “the first event,” initiates “a first
one of the secondary events,” makes “at least a portion of information
processed by the first event available to the first one of the secondary
events,” and completes “one or more of the first event and the first one of
the secondary events” (see generally claims 1, 3 and 12) represents a
commercial or legal interaction, an abstract idea. In particular, according to
Appellant, the claimed “business process” includes commercial interactions,
such as “sales, branding, marketing, advertising, [and] purchasing” and
includes legal interactions, such as “legal” business processes. See
Specification ¶ 5. Thus, we agree with the Examiner that the claim recites
an abstract idea, and in particular, a certain method of organizing human
activity (commercial or legal interaction).
Additionally, we adopt the Examiner’s findings that the above noted
claim elements also represent an abstract idea of managing personal
behavior or interactions. Final Act. 10. As indicated by the Examiner, here,
the claims merely recite a step of managing personal interactions such as
“comparing new and stored information and using rules to identify lists of
options.” Id. (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555
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F. App'x 950 (Fed. Cir. 2014) (emphasis in original)). Similarly, the steps of
managing first and second event (claims 1, 3, and 12) are steps of “managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).”
Memorandum Section I, 84 Fed Reg. at 52. In particular, the management
of first and second events claimed is merely a set of rules that a person
should follow in performing a business process. See Specification ¶ 6
(noting “A business process is an ordered series of events. An event is the
managed change of information from one or more sources to one or more
destinations”).
Furthermore, although the claims recite a computer, we also conclude
that the claims use a computer to perform steps that a person can perform
mentally. See MPEP § 2106.05(f) (“[C]laims that amount to nothing more
than an instruction to apply the abstract idea using a generic computer do not
render an abstract idea eligible.”). Here, the claims merely recite that “a
computer” initiates and completes first and second events, and that the first
event provides information to a second event before completion of at least
one of the first and second event. See generally claims 1, 3, and 12. Thus,
we also find that, but for the recitation of a computer, the abstract idea of the
claims can be performed in the mind of a user.
On this record, we agree with the Examiner that the claims recite an
abstract idea under Step 2A, Prong 1.
iii. Step 2A, Prong 2
Under the Step 2A, Prong 2 of the Revised Guidance, we next
determine whether the claims recite additional elements that integrate the
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judicial exception into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).
We conclude that the claims do not integrate the abstract idea into a
practical application because the claimed subject matter does not improve
the functioning of a computer or any other technology. Id. Rather, the
claims recite a broadly defined “business process” to manage completion of
first and second events. See generally claims 1, 3, and 12. In particular, the
claimed invention is directed to “providing interaction of multiple business
process events by nesting the information from prerequisite events into a
business process that is dependent on those processes to transact.” Spec. ¶ 2.
The provision of interaction between business processes does not alter the
functioning of any underlying computer or technology, and thus, does not in
and of itself improve a computer facilitating the business processes or
improve the technological field related to the business processes.
The fact that the steps of the claimed method are performed “by a
computing device” does not integrate the abstract idea into a practical
application because there is no requirement to use a particular or improved
computer. See MPEP § 2106.05(b) (“It is important to note that a general
purpose computer that applies a judicial exception, such as an abstract idea,
by use of conventional computer functions does not qualify as a particular
machine.”); id. at § 2106.05(a) (“[T]he claim must include more than mere
instructions to perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.”). Here, the recitation
of “a computer” does not integrate the abstract idea into a practical
application.
iv. Step 2B
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Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (quoting Mayo, 566 U.S. at 73).
The Examiner concludes “representative claim 1” does not recite
additional elements that are sufficient to amount to significantly more than
the abstract idea. Final Act. 11–15. As already discussed, the claims’
limitation of “a computer” encompasses the use of a general purpose
computer, and thus does not provide an inventive concept. See, e.g.,
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (“The
limitations amount to no more than performing the abstract idea of parsing
and comparing data with conventional computer components.”). Further,
the claim 1’s limitations of “initiating the first event,” “initiating a first one
of the second events,” “communicat[ing] with one or more data sources,”
and “completing one or more of the first event and the first one of the
secondary events” are routine and conventional business processes that are
routinely performed on a computer. See, e.g., 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.”). See also Examiner’s citations to Goodall at Final Act.
19–27. Consequently, claim 1 does not represent significantly more than the
abstract idea of organizing human activity (commercial or legal interaction)
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because the claims merely recite a routine and conventional business
practice run on a general purpose computer.
Therefore, claim 1 does not recite an inventive concept that is
significantly more than an abstract idea. Accordingly, we agree with the
Examiner that independent claim 1, and independent claims 3 and 12
reciting similar “routine and conventional business processes” limitations
(buySAFE, 765 F.3d at 1355), are directed to patent-ineligible subject
matter.
Appellant does not specifically explain why the Examiner erred in
concluding that the dependent claims recite an abstract idea and do not
amount to significantly more than the abstract idea. See App. Br. 11–14.
We will not speculate as to possible arguments for patent eligibility of these
claims. Accordingly, absent specific arguments presenting reasons why
dependent claims 2, 4–11, 13, 14, 17, and 19–22 are patent eligible, we are
also not persuaded the Examiner erred in rejecting the dependent claims.
2. Rejection under 35 U.S.C. § 112, second paragraph
The Examiner rejected claims 1–14, 17, and 19–22 as indefinite
because
the preamble calls for "execution of a business process, wherein the
business process is an event-driven activity including first and
secondary events" but the last step only calls for "completing one [or
more] of the first event and the first one of the secondary event... to
conclude execution of the business process. In other word, the
preamble appears to call for the completion of the first and secondary
events to conclude the execution of the business process, however, the
last step only call for completion of 1 event: either the first event or the
first one of the secondary event which is indefinite.
Final Act. 16.
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Appellant argues that the Appellant is free to define the bounds of
Appellant’s invention. App. Br. 18. In particular Appellant argues, “The
Applicant is free to choose claim language that requires completion of only
one of the two events, if desired.” Id.
We agree with Appellant. Failure to complete both the first and
second events is not inconsistent with the preamble. See Claim 1. The
claims as recited do not expressly require each event to reach conclusion.
Here, the Examiner’s finding that “the last step only call[s] for completion of
1 event” (Final Act. 16) is related to the breadth of the claims and does not
provide sufficient evidence that a person of ordinary skill in the art would
have found the scope of the claims unclear. Appellant’s claims are not
indefinite merely because only one event is claimed as being completed. In
re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not
indefiniteness”).
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
14, 17, and 19–22 as indefinite.
3. Rejection under 35 U.S.C. § 103(a)
The Examiner rejects the claims over Goodall, finding that Goodall
discloses and suggests a “business process . . . including first and secondary
events,” wherein “while both the first event and the first one of the
secondary events are pending, . . . the first one of the secondary events
beginning processing [a] portion of information prior to completion of the
first event.” Claim 1. In particular, the Examiner finds that Goodall teaches
and suggests an “order-to-delivery” event as the claimed “first event” (Final
Act. 19) and finds that inter alia printing of a label is a “secondary event,” as
claimed. Id. at 22–23. Examiner finds that printing a label (second event)
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occurs between the ordering of the prescription and the delivery of the
prescription, i.e., “prior to completion” of the order-to-delivery (first) event.
Id. at 24.
Appellant argues that Goodall does not disclose a “first event” as
claimed, but rather discloses several “separate events.” App. Br. 19–20.
According to Appellant, if the entire order-to-delivery event of Goodall is
considered a “first event,” a skilled artisan would include all of events
disclosed in Goodall, including intermediate steps between order and
delivery, such as “printing a label” (step 58), as the “first event.” Id. at 20.
That is, “no person of ordinary skill in the art would interpret an end-to-end
event as suggested by the Examiner to exclude . . . intermediate steps.” Id.
Consequently, Goodall fails to disclose “secondary events” separate from
the “first event,” wherein “the first event initiating a first one of the
secondary events” as claimed. Id.
Furthermore, Appellant argues that printing a label “is one of a series
of separate, sequentially executed steps” in the order-to-delivery process,
which occurs after the entry of the order. Id. at 21–23. According to
Appellant, “[b]ecause each step is executed after the preceding step is
completed, the steps are not pending at the same time.” Id. Thus, Appellant
argues that Goodall fails to disclose the limitation “while both the first event
and the first one of the secondary event are pending.” Id.
We do not agree with Appellant and adopt the Examiner’s findings of
fact and conclusions of obviousness.
As an initial matter of claim interpretation, we give the claims their
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the Specification
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and claims do not provide any specific definition for claim terms “first
event” and “secondary events.” See generally Spec. On the current record
before us, we do not find the Examiner’s conclusion that “first event”
encompasses an order-to-delivery event would be overly broad or
unreasonable. Final Act. 19. That is, the record does not support
Appellant’s contention that “first event” cannot comprise of several
“separate events,” or, if first event comprises several separate events, that a
skilled artisan would also include the step “printing a label” as part of the
“first event.” App. Br. 20.
Similarly, we find no error with the Examiner’s broad but reasonable
interpretation that a “secondary event” encompasses the step of printing a
label that occurs between the ordering of the prescription and the delivery of
the prescription, i.e., “prior to completion” of the order-to-delivery (first)
event. That is, nothing in the Specification and claims precludes “secondary
event” from being a step of printing a label that is separate from the order-
to-delivery event and that is pending at the same time as the order-to-
delivery event.
Here, as the Examiner finds and Appellant does not contest, Goodall
teaches an order-to-delivery event for a prescription and a label printing
event that occurs between the ordering and the delivery of the prescription.
Final Act. 19–24. Accordingly, we find no error with the Examiner’s
finding that Goodall teaches and suggests a “business process . . . including
first and secondary events,” wherein “while both the first event and the first
one of the secondary events are pending, . . . the first one of the secondary
events beginning processing [a] portion of information prior to completion
of the first event.” Claim 1.
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On this record, we sustain the Examiner’s rejection of independent
claim 1, and independent claims 3 and 12 recited similar limitations.
Appellant do not provide separate arguments for dependent claims 2, 4–11,
13, 14, 17, and 19–22, and thus these claims fall with claim 1, 3, and 12
from which they respectively depend.

DECISION
We affirm the Examiner’s decision to reject claims 1–14, 17, and 19–
22 under 35 U.S.C. § 101.
We reverse the Examiner’s decision to reject claims 1–14, 17, and 19–
22 under 35 U.S.C. § 112(b).
We affirm the Examiner’s decision to reject claims 1–14, 17, and 19–
22 under 35 U.S.C. § 103.
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.
§ 41.50(f).
AFFIRMED