Vahit Hakan. Hacigumus

Patent Trials and Appeals Board

Mar 3, 2020

12060951 - (D) (P.T.A.B. Mar. 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.
12/060,951 04/02/2008 Vahit Hakan Hacigumus ARC920060005US2 7640
63822 7590 03/03/2020
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
63822@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VAHIT HAKAN HACIGUMUS
____________

Appeal 2018-007020
Application 12/060,951
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
MATTHEW S. MEYERS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 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’s claims recite a method for providing service components
to business processes. (Spec. ¶ 1).
Claim 1 is representative of the subject matter on appeal.
1. A method for implementing business processes and
forming service compositions to provide service components
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used in implementing the business processes, said method
comprising:
identifying at least one service component of a plurality
of service components independently needed by each business
process of a plurality of business processes, wherein at least one
of the service components is needed by at least two business
processes of the plurality of business processes, and wherein at
least two different service components of the plurality of
service components are needed by at least one business process
of the plurality of business processes;
specifying a plurality of service compositions, wherein
each service composition comprises said at least one of said
service components, and wherein at least of said service
compositions comprises at least two of said service
components;
ascertaining, by a computer processor, an optimal subset
of the plurality of service compositions, wherein the total cost
of deploying the service compositions in the optimal subset to
provide said at least one service component independently
needed by each business process does not exceed the total cost
of deploying the service compositions in any other subset of the
plurality of service compositions to provide said at least one
service component independently needed by each business
process;
deploying and integrating the service compositions in the
optimal subset to provide to a first business process of the
plurality of business processes the at least one service
component needed by the first business process to implement at
least one service; and
implementing the first business process in a Service
Oriented Architecture (SOA) platform in which applications
and Information Technology (IT) resources are distributed and
seamlessly accessible, said implementing the first business
process comprising implementing the at least one service, said
implementing the at least one service comprising installing
computer hardware and computer software on a consumer's
premises.

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THE REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. 0F1

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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
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,

1 The rejection of claims 1–20 under 35 U.S.C. §112(b), second paragraph
has been withdrawn. (Ans. 14).
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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., 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).
The Examiner determines that the claims are directed to determining
an optimal group of service compositions for providing service components
to business processes. (Final Act. 12). The Examiner determines that the
claims recite collecting and comparing known information, collecting
information, analyzing it, and displaying certain results of the collection and
analysis and mathematical relationships/formulas, which, as recited in this
manner, are abstract ideas. The Examiner finds that the process claims
include the additional element of a computer processor and the article of
manufacture claims include additional elements of a computer program
product comprising a computer readable storage device having a computer
readable program code embodied therein, said computer readable program
code containing instructions that when executed by a processor of a
computer system implement the recited method. (Final Act. 13). In
addition, the Examiner finds that the additional elements perform routine
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operations, including those identified by the courts as well-understood,
routine, and conventional computer functions and do not qualify as
significantly more than the claimed judicial exception. (Final Act. 15).
The Specification discloses that the method first identifies at least one
service component of a plurality of service components independently
needed by each business process of a plurality of business processes
(collects and analyzes data), then identifies a plurality of service
compositions (analyzes data), and ascertains an optimal subset of the
plurality of service compositions (analyzes data). (Specification 30–31). As
such, the Specification supports the Examiner’s determination that the
claims recite collecting and comparing known information, collecting
information, and analyzing it.
Consistent with this disclosure, claim 1 recites “identifying at least
one service component” (collecting/evaluating data); “specifying a plurality
of service compositions” (evaluating data); “ascertaining . . . an optimal
subset of the plurality of service compositions” (evaluating data), and, as
such, claim 1 also recites a method of collecting and comparing known
information, collecting information, and analyzing it.
We, therefore, agree with the Examiner’s finding that claim 1 recites
collecting and comparing known information, collecting information, and
analyzing it. These steps, as recited in claim 1, 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). For example, take the first limitation of
“identifying at least one service component of a plurality of service
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components independently needed by each business process of a plurality of
business processes, wherein at least one of the service components is needed
by at least two business processes of the plurality of business processes, and
wherein at least two different service components of the plurality of service
components are needed by at least one business process of the plurality of
business processes.” The “identifying” here involves no more than making
an evaluation that a service component has certain characteristics, and we
are unpersuaded that there is anything about the service components or
characteristics that cannot be performed practically in the human mind.
Thus, we find that claim 1 recites the abstract idea of 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” alone 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 55. We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
processor 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 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
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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 revised 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 therefore is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim 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 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
The introduction of a 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
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“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 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do 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 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, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
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Considered as an ordered combination, the computer components of
Appellant’s claims add 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.
Claim 1 does not, for example, purport to improve the functioning of
the processor itself. As we stated above, the claim 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. (See, e.g., Specification ¶¶ 114–115). In fact, the Specification
discloses that any configuration of hardware and software, as would be
known to a person of ordinary skill in the art, may be utilized for the
invention. (Specification ¶ 115). Thus, claim 1 amounts to nothing
significantly more than instructions to apply the abstract idea of information
access using some unspecified, generic computer. Under our precedents,
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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. 9–15; Reply Br. 2–
8) 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 claim 1 recites more than just “identifying,”
“specifying,” and “ascertaining,” because the claims include installing
computer hardware. (Appeal Br. 12). As we discussed above, the first step
in the subject matter eligibility analysis is to determine if the claim “recites’
a judicial exception. Claim 1, by reciting “identifying,” “specifying,’ and
“ascertaining” recites steps of collecting and comparing known information.
It is true that claim 1 also recites “implementing the at least one service
comprising installing computer hardware and computer software on a
consumer’s premises.” This recitation is in addition to the abstract idea and
is considered when determining if the judicial exception recited in claim 1 is
integrated into a practical application, and whether the claim recites
significantly more than an abstract idea. The Examiner considers this
language and finds that the installation of service components is performed
at a high level of generality, and is performed in a conventional manner.
The Examiner finds that delivering and installing computer components (e.g.
hardware and software) at the premises of a customer have long been
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performed, these acts are prevalent in the art and they are conventional ways
of providing hardware and software to a customer. (Ans. 15).
We agree. These limitations do not reflect a patent-eligible
application of the patent-ineligible abstract idea. To the contrary, we agree
that these limitations are recited at a high-level of generality and comprise
routine techniques and post-solution activity that does not impart a sufficient
inventive concept to claim 1. See Mayo, 132 S.Ct. at 1298 (“well-
understood, routine, conventional activity previously engaged in by
scientists who work in the field ... is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such law.”);
see also Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post-
solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance.”) Appellant has not persuasively shown otherwise.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claim does not seek to tie up or preempt the
abstract idea. (Reply Br. 3). Although preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
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addressed and made moot.” Ariosa, 788 F.3d at 1379.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner failed to follow the case of
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018), because the
Examiner failed to provide evidence that the additional elements recited in
the claims are well-understood, routine or conventional. (Reply Br. 6-7).
This is not correct. In fact, the Examiner specifically relied on paragraphs
114–115 of the Specification in making the finding that the additional
elements recited in the claims are well-understood, routine and conventional.
(Ans. 16).
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain the rejection as it is directed to the
remaining claims subject to this rejection because Appellant has not argued
the separate eligibility of these claims.

CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.

DECISION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
Overall
Outcome
1–20
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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