Subir Parulekar et al.

Patent Trials and Appeals Board

Aug 22, 2019

12914418 - (D) (P.T.A.B. Aug. 22, 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.
12/914,418 10/28/2010 Subir Parulekar 82264298 5757
146568 7590 08/22/2019
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
PETERS, LISA E
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUBIR PARULEKAR, SANDEEP SUBHASH KHABIYA,
and RAJMOHAN RAJAMARIAPPAN
__________

Appeal 2018-005478
Application 12/914,418
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, JEFFREY W. ABRAHAM, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants1 appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 2, 4, 6, 7, 9–14, and 16–21. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Appellants’ invention is directed to methods, computer readable
media, and computer systems that implement software that avoids the
burdensome and inefficient process of having to manually fill out time
sheets (Spec. ¶¶ 1, 7; claims 1, 9, 13).
Claim 1 is illustrative of the issues on appeal:
1. A method of a computer system, comprising:
parsing, by a processor of the computer system, contents
of a first page and a second page of a plurality of pages of an
application that are accessed by a user, the application executed
in the computer system, to determine whether the parsed
content of the first page of the plurality of pages includes time
tracking context information, and whether the parsed content of
the second page of the plurality of pages includes time tracking
context information;
in response to determining that the parsed content of the
first page does not include time tracking context information,
declining, by the processor, to display a time tracker user
interface for the first page;
in response to determining that the parsed content of the
second page includes time tracking context information,
displaying, on a display screen of the computer system, a time
tracker user interface for the second page, wherein the
displayed time tracker user interface indicates an activity
associated with the second page and against which time is
logged;

1 Appellants identify “EntIT Software LLC” as the real party in interest
(App. Br. 3).
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prior to logging time against the activity, displaying, on
the display screen, description information of the activity in the
displayed time tracker user interface, the description
information obtained from the time tracking context
information for the second page;
logging, by the processor, time against the activity;
adding, by the processor, the activity and associated
logged time to a maintained list of activities against which time
has been logged; and
providing, by the processor, the activities of the
maintained list and associated logged times to a time sheet
application for access by the user

Appellants appeal the following rejections:
Claims 1, 2, 4, 6, 7, 9–14, and 16–21 are rejected under 35 U.S.C. § 101
as directed to patent ineligible subject matter.

Appellants’ arguments focus on the subject matter common to
independent claims 1, 9, and 13 (App. Br. 8–13). Because the same
arguments are made with regard to claims 1, 9, and 13, we select claim 1 as
representative. 37 CFR § 41.41(c)(vii). Claims not argued separately will
stand or fall with our analysis of the rejection of claim 1.

LEGAL 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 35 U.S.C. § 101 to include
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
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not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within a category excluded from
eligible subject matter, our inquiry focuses on the Supreme Court’s two-step
framework described in Mayo and Alice. Alice, 573 U.S. 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. Concepts
determined to be abstract ideas, and thus patent ineligible, include mental
processes. E.g., Gottschalk v. Benson, 409 U.S. 63, 69 (1972).
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 (quotation marks 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).
The USPTO recently published revised guidance on the application of
§ 101. USPTO, 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 activities such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. 2018)).
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 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, 84 Fed. Reg. at 52, 55–56.

FINDINGS OF FACT
The Examiner’s determinations regarding the 35 U.S.C. § 101
rejection are located on pages 2 to 3 of the Final Office Action. The
Examiner finds that claim 1 is directed to the abstract idea of data
manipulation (Final Act. 2). The Examiner finds that facts of the present
appeal correspond to comparing new and stored information and using rules
to identify options and collecting information, analyzing it and displaying it
(id.). The Examiner finds that the abstract idea in claim 1 starts with the
“parsing contents . . .” phrase and ends with the “time sheet application for
assess [sic access] by the user” (id. at 2–3). The claim does not include
additional elements that amount to significantly more than the judicial
exception because the displaying limitation without specific hardware
recited contains a high level of generality and does not apply as significantly
more (id. at 3).
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Appellants argue that the subject matter of claim 1 is not directed to
an abstract idea because it is directed to an improvement in computer-related
technology (App. Br. 8). Appellants contend that in accordance with a
memorandum dated November 2, 2016 from Deputy Commissioner for
Patent Examination Robert Bahr, claims are not directed to abstract ideas if
the claims recite a set of rules that improve computer-related technology (id.
at 8–9). Appellants contend that the Deputy Commissioner’s memorandum
is based upon the court’s holding in McRO, Inc. v. Bandai Namco Games
American Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 9). In citing
McRO, Appellants argue that the court stated that improvement in computer-
related technology is not limited to improvements in the operation of a
computer or computer network, but may also be claimed as a set of rules that
improve computer related technology by allowing computer performance of
a function not previously performable by a computer (App. Br. 9).
Appellants contend that an indication that a claim is directed to an
improvement in computer-related technology may include a particular
solution to a problem or a particular way to achieve a desired outcome
defined by the claimed invention as opposed to merely claiming the solution
or outcome (id.).
Appellants contend the claimed method that includes parsing the
contents of a first and second page using a computer processor, declining to
display or displaying a time tracker interface if the parsed contents does not
or does, respectively, reveal time tracking context information, displaying
description information of the activity, logging time against the activity,
adding the activity to a list and providing the list to the time sheet
application, recites a specific way to allow a computing device to accurately
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track and log the time a user spends on the pages of an application (App. Br.
9–10). Appellants contend that the claims are not directed to an abstract
idea (id. at 11).
Appellants further argue that the claims recite more than comparing
new and stored information or collecting information, analyzing it and
displaying as was found to be directed to an abstract idea in the Classen,
Cybersource, SmartGene, Cyberfone, and Digitech line of cases (App. Br.
11). Appellants contend that the claims require parsing, tracking and
displaying the time of the user’s activity, which transforms the state of the
computing device and, so, are different from comparing new and stored
information as in Classen, Cybersource, SmartGene, Cyberfone, and
Digitech (id.).
ANALYSIS
We begin our analysis by first addressing whether the subject matter
of claim 1 is directed to a new and useful process, machine, manufacture, or
composition of matter. Claim 1 is directed to a “method of a computer
system . . . .” It is clear from the preamble that the claim is directed to a
method, one of the statutory classes of invention.2 Therefore, step 1 of the
analysis is satisfied.
Next we analyze claim 1 to determine if the claim is directed to a
judicial exception (i.e., abstract idea, law of nature, or natural phenomena).
The Examiner finds that the claims are directed to the abstract idea of

2 Claim 9 recites a non-transitory computer readable media (a product) and
claim 13 recites a computer system (an apparatus or product), each of which
falls within a statutory class of invention and satisfy our first inquiry of the
subject matter eligibility analysis.
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manipulation of data (Final Act. 2). The Examiner finds that the facts and
holdings in Digitech and Electric Power Group3 cases comport with the
facts presented in this case (Ans. 4–5). Appellants argue that the facts of the
present appeal are more in line with those in McRO4 (App. Br. 9). The
Examiner finds that McRO is specific to the narrow set of facts presented in
that case (i.e., lip synching in computer animation) (Ans. 3). The Examiner
distinguished McRO’s facts from those in the present appeal in that the
present claims are not limited to a particular technology field and have an
unrestricted scope (id.).
Although we do not disagree with the Examiner’s analysis based on
the pre-2019 guidance, we find that the claim recites the abstract idea of
mental processes. See MPEP § 2106.04(a)(2)(III). Claim 1 requires the
following steps: (1) parsing contents of a first page and a second page
accessed by a user to determine whether the parsed content of the first and
second pages has time tracking context information, (2) in response to
determining that the first page does not include time tracking context
information, declining to display a time tracker user interface for the first
page, (3) in response to determining that the second page contains time
tracking context information, displaying on a screen of a computer system a
time tracker user interface for the second page, wherein the displayed time
tracker user interface indicates an activity associated with the second page
and against which time is logged, (4) before logging time against the

3 Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014). Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016).
4 McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2018).
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activity, displaying, on a display screen, description information of the
activity in the displayed time tracker user interface, wherein the description
information obtained from the time tracking context information for the
second page, (5) logging time against the activity, (6) adding the activity and
associated logged time to a maintained list of activities against which time
has been logged, and providing the list of activities of the maintained list to a
time sheet application for access by the user (claim 1).
Although the claim recites using a processor and displaying on a
computer screen a time tracker user interface, the claimed process recites
steps that can be performed as a mental process and implemented with
pencil and paper. Specifically, the process covers analyzing two documents
or pages for descriptive content to determine if they contain information
against which a user wants to track his or her time. If the user determines
after reviewing the documents for context information that he or she wants
to track time against the activity represented by the document, the user can
begin logging time against the activity. The user can decide to keep a
written list of activities against which time as been logged and finally
summarizing the tracked time periods on a time sheet. Each step could be
performed in the mind of the user and finally submitted on a time sheet in
writing. In light of our analysis, we find that the claimed method and its
embodiment in a computer system (claim 13) and computer readable media
(claim 9) recite abstract ideas in the form of mental processes.
Appellants, citing McRO, contend that the claimed process improves
computer-related technology and is, therefore, not an abstract idea (App. Br.
8–9). As found by the Examiner, the facts in McRO do not mirror the facts
presented in this case (Ans. 3). Indeed, the court in McRO found that the lip
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synching process performed by McRO’s claims was not the same as would
have been performed in the prior art when an animator manually changed
the facial features of an animated character to match how the face forms a
word. McRO, 837 F.3d at 1314. In contrast, with the exception of reciting a
generic processor and displaying a time tracker interface and descriptive
material on a generic display, the claimed process appears identical to the
mental processes performed in the mind of person deciding whether to keep
track of time for a task or project. Accordingly, the holding in McRO does
not appear to be controlling to the facts presented in this Appeal.
In the next step of our analysis, we need to assess whether the claim
integrates the judicial exception into a practical application. In the present
case, claim 1 recites using a processor to perform various steps of the
process and using a display screen of a computer system to present
information regarding the content and time tracker user interface to the user.
In essence, the claimed method uses a computer system with a display
screen to assess whether a page or document contains time tracking context
information, presents descriptive content to the user of the document
containing time tracker context information, logs time against the
page/document, keeps a list of activities associated with the logged time and
sends the list to a time sheet application. The software embodied in the
method is used on a generic computer system (Spec. ¶ 9). In other words,
the claim amounts to a series of mental process steps with the nominal
recitation of using a generic computer processor and display. The use of a
generic processor limitation is no more than mere instructions to apply the
judicial exception using generic computer equipment. The computer and
display in the present case are being used as tools to implement the software.
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Recitation of a processor and display does not integrate the abstract idea into
a practical application because it does not impose any meaningful limits on
practicing the abstract idea.
As the final step in our subject matter eligibility analysis we assess
whether the claims include additional limitations that are more than well-
understood, routine, and conventional activities. We use the guidance
provided by the PTO in the April 19, 2018 memorandum regarding the
decision in Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018). In
addition to the recited steps, claim 1 further recites using a processor and
display screen of a computer system. Claim 13 recites a non-transitory
storage medium storing instructions and processor, which the Examiner
finds to be “well known in the art” (Final Act. 3).
Appellants argue that the combination of the limitations in claims 1, 9,
and 13 is significantly more than an abstract idea because the combination is
a non-conventional and non-generic arrangement (App. Br. 12). Appellants
do not challenge the Examiner’s finding that the processor and storage
medium are well-known in the art (App. Br. generally; Reply Br. generally).
Moreover, we find that the Specification describes that the computing device
used in practicing the method is a generic desktop computer, laptop, mobile
device, or smartphone (Spec. ¶ 9). The Specification describes that the
computer readable media may be one of the well-known devices such as a
hard disk, DVD, dynamic access memory (DRAM) or a flash memory
(Spec. ¶ 13). In other words, the recitation of the additional limitations in
combination with the claimed process that could be practiced using mental
processes does not amount to significantly more than the abstract idea.
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Based upon our analysis, we find that the claims are not directed to
eligible subject matter under 35 U.S.C. § 101. We affirm the Examiner’s
rejection of the claims under § 101.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED