Ex Parte DAVIS et al

Patent Trial and Appeal Board

Nov 19, 2018

13448745 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/448,745 04/17/2012
45988 7590 11/21/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Stephen M. DA VIS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FIS920080116US2 8132
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/21/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN M. DA VIS, PHILIP T. HO, and
RAKESH K. P ARIMI
Appeal2017-008441
Application 13/448,745
Technology Center 3600
Before JOSEPH L. DIXON, JUSTIN BUSCH, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-15 and 17-21, which constitute all
the claims pending in this application. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b ). We affirm.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to "a service oriented
architecture (SOA) infrastructure for business process verification and
systems integrated testing." Spec. ,r 1. SOA allows business processes to be
packaged as services ("unassociated units of functionality, which have no
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calls to each other embedded in them") that are loosely coupled to the OS
and programming languages underlying the applications but not tied to
specific technologies. Spec. ,r,r 3--4. According to the Specification,
"existing SOA test tools are limited to single application specific functional,
performance, end to end testing with short running transactions" and "have
limited SOA test coverage for unit and functional tests only." Spec. ,r 5
("That is, the current SOA tools have excellent performance testing, but with
limited functional verification."). The existing test tools also allegedly
"have synchronous transaction execution and are primarily web services
oriented test solutions" and "lack modeling capabilities for end-to-end
process validations support, and do not support batch transaction
processing." Spec. ,r 5. Appellants' claimed invention uses a primary agent
to identify the start of a particular business process, access context look-up
services from a service manager to identify an action agent to perform a
verification function, and calls that action agent. Spec. ,r 7. Appellants'
invention allegedly "provides full coverage verification for all software test
phase across an integrated set of systems." Spec. ,r 19. The invention's
action agents can call other action agents to do part of the validation work
when the "business process is externalized across one or more
application(s)." Spec. ,r 22. "The framework of the present invention also
provides a solution for verifying scenarios (functional verification and
performance evaluation) that typically requires manual verification or
requires predefined setup of automated testing." Spec. ,r 53 (emphasis
added). Claim 1 is independent and reproduced below:
1. A computer system for verifying a particular function of a
particular business process, the system comprising:
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a CPU, a computer readable memory and a computer
readable storage media;
first program instructions to detect, by one or more
primary agents, a start of the particular business process;
second program instructions to provide, by one or more
action agents, a testing service and a verification function of the
particular business process, wherein the verification function is a
determination of whether the particular business process in
totality is executed successfully;
third program instructions to provide, by a service
manager, context look-up services for one or more primary
agents;
fourth program instructions to determine, by the service
manager, an action agent which is responsible for a particular
verification function of the particular business process, based on
the context look-up services;
fifth program instructions to forward a reference of the
action agent which is responsible for the particular verification
function of the particular business process to a requesting
primary agent;
sixth program instructions to invoke an action agent, by
the requesting primary agent, to perform the particular
verification function of the particular business process, wherein
the particular verification function includes verifying at least one
of a rational function tester (RFT) script, a rational tester for SOA
Quality, a JAVA program, and a rational tester;
seventh program instructions to aggregate reports in a
central repository, wherein the reports include one of a simple
test result and a collection of test results;
eighth program instructions to consolidate the reports in
the central repository; and
ninth program instructions to invoke a second action agent
when it is determined that the business process cannot be
completely verified by the action agent which is responsible for
the particular verification function,
wherein the first, second, third, fourth, fifth, sixth, seventh,
eighth, and ninth program instructions are stored on the computer
readable storage media for execution by the CPU via the
computer readable memory.
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REJECTIONS
Claims 1-15 and 17-21 stand rejected under 35 U.S.C. § 101 as being
directed to judicially excepted subject matter. Final Act. 3---6, 17-19.
Claims 1-15, 17, and 21 stand rejected under 35 U.S.C. § 103 as
obvious in view of Slaughter (US 6,643,650 Bl; Nov. 4, 2003) and Thain
(US 2009/0216874 Al; Aug. 27, 2009). Final Act. 7-15, 20.
Claims 18-20 stand rejected under 35 U.S.C. § 103 as obvious in
view of Slaughter, Thain, and Todd (US 6,742,059 Bl; May 25, 2004).
Final Act. 15-17.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
THE 35 U.S.C. § 101 REJECTION
The Examiner concludes claims 1-15 and 1 7-21 are directed to
judicially excepted subject matter. Final Act. 3---6, 17-19; Ans. 3---6.
Appellants argue: ( 1) the Examiner has not presented a prima facie case the
claims are directed to an abstract idea; (2) the claims are directed to an
abstract idea; and (3) the claims recite additional elements that add
significantly more to the alleged abstract idea. App. Br. 5-20; Reply Br. 2-
13.
Prima Facie Case
Appellants argue the Examiner's rejection is not supported because
the Examiner has not clearly identified what limitations set forth the alleged
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abstract idea. App. Br. 5; Reply Br. 2. Appellants also argue the Examiner
has not established or explained why "verifying that a business process
executed successfully" corresponds to any concepts determined to be
ineligible by prior court decision. App. Br. 5; Reply Br. 2. We disagree.
The Federal Circuit has repeatedly noted 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 court has, thus,
held that the U.S. Patent and Trademark Office (USPTO) carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, all that is required of the Office is that it set forth the statutory basis of
the rejection, and the reference or references relied on, in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
The Examiner's rejection, as discussed further below, presents a
prima facie case by identifying that Appellants' claims are directed to
particular concepts, which the Examiner explains are similar to abstract
ideas courts have found ineligible, and explains why the additional elements
do not amount to significantly more than the abstract idea. See Final Act. 3-
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6 ( explaining that all the recited steps are directed to concepts determined to
be abstract ideas and the additional elements-i.e., CPU, memory, and
storage media-are generic computer structure), 17-19; Ans. 3---6. Thus, the
Examiner: set forth the statutory basis for the rejection, namely 35 U.S.C.
§ 101; concluded that the claimed invention is directed to a judicial
exception to § 101, namely an abstract idea; and, contrary to Appellants'
contention, explained and analyzed the rejection in sufficient detail to permit
Appellants to respond meaningfully. See Jung, 637 F.3d at 1362. In fact,
the Appeal Brief addresses reasons Appellants' claims allegedly are different
than the identified concepts courts previously determined were abstract
ideas. See App. Br. 6-11; Reply Br. 2---6.
The Examiner notified Appellants of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. In doing so, the Examiner set forth a prima facie case of
ineligibility.
Step One of Alice Framework
In step one of the Alice analysis, we "determine whether the claims at
issue are directed to" a patent-ineligible concept, such as an abstract idea.
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354--55 (2014).
The Examiner determines the claims are directed to using multiple
action agents to verify that a business process executed successfully, which
involves only basic data processing functions ( obtaining and comparing
data). Final Act. 3---6, 18. The Examiner determines the additional
limitations (i.e., the CPU, computer readable memory, and computer
readable storage media) do not improve the computer itself or a technology,
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but rather simply claim computer components at a high level of generality to
perform the basic computer functions (e.g., storing and comparing data) to
execute the abstract idea. Final Act. 6, 18-19 ( citing Enfzsh LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607 (Fed. Cir. 2016)); Ans. 3---6 (citing CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). The
Examiner concludes Appellants' claims are not similar to the claims found
eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014) because Appellants' claims merely perform an abstract business
process using a conventional computer. Final Act. 19.
Appellants argue claim 1 is not directed to an abstract idea. App.
Br. 6-11, 15; Reply Br. 12. Appellants argue the claims are directed to an
improvement to computer functionality rather than simply using a computer
in its ordinary capacity to perform an economic or other task. App. Br. 15
(citing Enfzsh, 822 F.3d 1327); Reply Br. 12. Appellants argue the
Examiner overgeneralizes the claims and that "claim 1 does not recite
elements directed to" the abstract idea of collecting and comparing
information, a concept the Federal Circuit previously determined was
abstract. App. Br. 6-7. Appellants argue claim 1 's recited step of invoking
a second agent "is not similar to collecting and comparing known
information" because "a determination has to be made before a second
action agent is invoked." App. Br. 6-7.
Appellants also argue claim 1 is not similar to each abstract idea the
Examiner identified. App. Br. 7-11. Specifically, Appellants argue the
invoking a second agent step and/or the aggregating and consolidating
reports steps are not similar to the identified abstract ideas (i.e., comparing
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data to determine a risk level; obtaining and comparing data; comparing new
and stored information and using rules to identify options; and data
recognition and storage) because the claimed steps: (1) do not aid in
determining a risk level; (2) require making a determination based on
context-look up services; and (3) simply include all the results (rather than
comparing data). App. Br. 7-11.
Appellants argue claim 1 's requirement of a service manager
determining an appropriate action agent is more than simply "checking data"
and the service manager forwarding "a reference of an action agent is more
than simply [forwarding] data" or obtaining data. Reply Br. 2-3.
Appellants also argue invoking an action agent to perform one of various
verification functions "is more than simply verifying a function because an
action agent is invoked to verify" a particular one of the identified functions.
Reply Br. 3. Appellants argue the aggregating and consolidating steps are
more than just collecting data because the claim requires a service manager
to compile reports. Reply Br. 3--4.
In response to the Examiner's conclusion that Appellants' claims are
similar to those claims found directed to obtaining and comparing data and,
therefore, determined ineligible in CyberSource, Appellants argue claim 1 's
limitations are more than obtaining and comparing data. Reply Br. 4---6.
Specifically, Appellants paraphrase each of claim 1 's limitations and argue
each limitation is not simply obtaining and/or comparing data because the
limitations perform functions according to the recited limitations. Reply
Br. 4--5.
We agree with the Examiner's conclusions because Appellants'
claims focus on managing a business process using components (e.g.,
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primary agents) to determine which other components (e.g., action agents)
need to be executed in order to verify a particular function of the business
process. The claimed processes simply automate and aggregate test
processes by storing references to action agents needed to verify particular
functions and monitoring complex business processes to determine when to
initiate the verification procedures. See Spec. ,r 40. The concepts
underlying Appellants' claims-i.e., the concepts to which Appellants'
claims are directed-are obtaining data ( a trigger identifying a start of a
business process), analyzing the data to transmit a request for and receive
additional information ( a reference to instructions that perform verification
functions) necessary to initiate execution of one or more particular
verification functions, and collecting, aggregating, and consolidating other
information (reports).
Appellants' claims recite computer instructions that "invoke" an
action agent. However, Appellants' claimed invocation of an agent is
simply an instruction to execute a generically recited "agent," which is
simply a set of program instructions to implement computer logic or
function. See Spec. ,r,r 20, 22 ("The action agents are implemented as
BPELs and communicate using Web Services, but can also be implemented
as Java Logic."), 23. Notably, the details of the function or implementation
of the agents is not claimed. Nor are the details described in Appellants'
Specification beyond stating that the action agents perform a verification
function to verify "at least one of a rational function tester (RFT) script, a
rational tester for SOA Quality, a JAVA program, and a rational tester."
Accordingly, to the extent claimed and described in Appellants'
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Specification, the recited invoking step is merely a basic computer function
of identifying a program or module for a processor to execute.
We are not persuaded by Appellants' conclusory statement that the
claims improve the way computers operate rather than using computers to
perform tasks. See App. Br. 15; Reply Br. 12. Although the claims recite a
CPU, memory, storage media, and instructions to execute the recited steps,
these elements do not change the character of the claims as a whole.
Appellants' other arguments that the claims are not directed to abstract ideas
are similarly conclusory and unpersuasive. To the extent these arguments go
beyond paraphrasing claim limitations and concluding the claims are
different than the concepts the Examiner identifies, Appellants merely argue
certain limitations recite more than just collecting and comparing
information because the recited determinations are performed in a certain
order or involve a service manager (to perform look-up services or compile
data). See App. Br. 6-11; Reply Br. 2--4.
The Federal Circuit has concluded similar concepts were directed to
abstract ideas. Specifically, in Electric Power, the Federal Circuit concluded
claims reciting a method of collecting data from various sources, "detecting
and analyzing events" by identifying information in the received data,
reporting the event analysis results and visualizations of measurements,
aggregating the event analysis information, and providing a composite
indicator were directed to an abstract idea because the claims were directed
to "collecting information, analyzing it, and displaying certain results of the
collection and analysis." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1351-53 (Fed. Cir. 2016).
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Similarly, the Federal Circuit concluded claims directed to collecting
and analyzing information and presenting the results were ineligible as
claiming no more than an abstract idea. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364,
1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage,
and recognition of data are directed to an abstract idea"); SAP Am., Inc. v.
InvestPIC, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("merely presenting
the results of abstract processes of collecting and analyzing information ...
is abstract as an ancillary part of such collection and analysis") ( quotations
omitted); CyberSource, 654 F.3d at 1370 (concluding claims reciting steps
for verifying credit card transactions over the Internet were ineligible
because the claimed method "simply requires one to 'obtain and compare
intangible data pertinent to business risks."'). The Federal Circuit
determined the fact that a method is claimed using a computer
implementation does not render the subject matter eligible. See
CyberSource, 654 F.3d at 1375.
Moreover, limiting the particular data analyzed does not change the
character of the claim. See Elec. Power, 830 F.3d at 1353 (stating that
"collecting information, including when limited to particular content (which
does not change its character as information)" is treated as "within the realm
of abstract ideas"). Thus, the particular event type information or service
state values transmitted between the repository, computer, and SOA
components do not change the character of the claims.
We agree with the Examiner that the claims are directed to an abstract
idea and, thus, tum to step 2 of the Alice analysis.
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Step Two of Alice Framework
In step two of our Alice analysis, we determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner finds the particularly recited steps simply describe the
abstract idea and the only portions of the claims that are not the part of the
abstract idea are the CPU, memory, and storage media. Final Act. 6, 19;
Ans. 4--5. The Examiner concludes these elements do not add significantly
more to the abstract idea sufficient to render the claims patent-eligible
because these elements are generically recited computer structure and using
a general purpose computer to perform the claimed steps does not render the
subject matter patent-eligible. Final Act. 6, 19; Ans. 5. The Examiner
determines the claims do not recite an improvement in computers, another
technology, or another technical field; rather the alleged improvements are
to a particular business process. Final Act. 19; Ans. 5---6. The Examiner
concludes the claims, therefore, do not include additional limitations that
amount to significantly more because the claims: require only generic
computer elements to implement the claimed abstract idea; are not rooted in
computer technology; and do not recite an improvement to another
technology or technical field. Final Act. 6, 19; Ans. 4---6. The Examiner
also concludes the dependent claims neither change the character of the
claims as a whole nor add significantly more to the abstract idea. Ans. 6.
Appellants argue the claimed steps add significantly more to the
abstract idea because the claims: improve another technology or technical
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field; confine the claims to a useful application having limitations that are
beyond what was well-understood, routine and conventional; and have
meaningful limitations beyond linking the abstract idea to a particular
technological environment. App. Br. 13-15; Reply Br. 7-9, 11-12.
Appellants paraphrase some of the claim limitations and assert,
without further explanation, that the limitations are more than well-
understood, routine, and conventional activities or otherwise add
significantly more to the abstract idea. App. Br. 13; Reply Br. 6 (arguing
certain steps are not well-understood, routine, and conventional because the
steps are not just receiving and sending data), 10-11; see also App. Br. 14
(paraphrasing the entirety of claim 1 and, without further explanation,
asserting claim 1 includes an inventive concept because it "is a non-
conventional and non-generic arrangement of elements.").
For example, Appellants argue the aggregating and consolidating data
steps are more than insignificant extra-solution activity because the steps are
not just data gathering. Reply Br. 7. Appellants argue that determining an
action agent based on context look up services improves "the technology and
technical field of verification and testing in a service oriented architecture."
App. Br. 13. Appellants also argue, without further explanation, the
determining, aggregating, and consolidating steps do not just apply an
abstract idea on a computer. App. Br. 14; Reply Br. 7. Appellants argue the
verification function verifies a particular verification function, which is a
meaningful limitation beyond simply linking the abstract idea to a
technological environment. App. Br. 13.
Appellants argue the generic computing components are not just
performing well-understood, routine, and conventional functions because
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they are performing the recited functions and overcome the problems
identified in Appellants' Specification. Reply Br. 7-9 (citing Spec. ,r 5).
Appellants argue the claims allow "for full coverage verification of all
software test phases across an integrated set of systems." App. Br. 14 ( citing
Spec. ,r 19). Appellants argue their claims, like the claims in DDR, are
necessarily rooted in computer technology to overcome a problem
(limitations of test tools) arising in computer networks (SOA infrastructure
for business process verification). App. Br. 14--15 (citing Spec. ,r,r 5, 19);
Reply Br. 11-12.
We are not persuaded the Examiner erred. Notably, many of
Appellants' arguments focus on the elements and functions recited in claim
1 that are a part of the abstract idea. As summarized above, Appellants
assert various limitations add significantly more because they are more than
well-understood, routine, and conventional activities, they are rooted in
computer technology, and they improve the technical fields of SOA
verification and testing. See App. Br. 13-15; Reply Br. 7-12. Appellants'
arguments, however, merely summarize or paraphrase the claim language
and assert the limitations add significantly more for these reasons, but fail to
provide persuasive explanation that the identified limitations are in addition
to the recited abstract idea or why the limitations add significantly more.
An inventive concept "cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Alice, 134
S. Ct. at 2355 (explaining that, after determining a claim is directed to a
judicial exception, "we then ask, ' [ w J hat else is there in the claims before
us?"' (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at
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78)). Instead, an "inventive concept" is furnished by an element or
combination of elements that is recited in the claim in addition to the judicial
exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 134 S. Ct. at
2355 (citing Mayo, 566 U.S. at 72-73); see BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme
Court in Alice "only assessed whether the claim limitations other than the
invention's use of the ineligible concept to which it was directed were well-
understood, routine and conventional" emphasis added).
On the other hand, "[i]f a claim's only 'inventive concept' is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea." BSG Tech, 899 F.3d at 1290-91 (citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
We agree with the Examiner that the recited instructions for
performing the various steps are part of the abstract idea. Therefore, the
question is whether there are additional elements recited in the claims that
add significantly more to the abstract idea. The claims recite a "CPU," a
"computer readable memory," "computer readable storage media," primary
and action "agents," a "service manager," and a "repository." However, as
stated by the Examiner, these elements are generally and generically recited,
and Appellants' Specification suggests that these are well-known elements
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being used as intended and may be comprised of software, hardware, or a
combination of software and hardware. See Spec. ,r,r 22-24, 26, 30-32, 36,
43, Figs. 1-2, 4---6. In other words, Appellants' claims invoke computers
merely as tools to obtain, analyze, transmit, collect, aggregate, and
consolidate information in a particular way, thereby implementing the
abstract idea of verifying a business process. See BSG Tech, 899 F.3d at
1286. Simply using generic computers to automate a process does not
confer eligibility onto an otherwise abstract idea because it does not improve
a computer or technology, but rather improves the process itself. See
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (explaining that the claimed
steps could easily "be carried out in existing computers long in use, no new
machinery being necessary").
Appellants' arguments that the claims solve a technical problem
arising in computer networks and improve the underlying computer or the
technical field of SOA infrastructure are unpersuasive. See App. Br. 14--15
(citing Spec. ,r,r 5, 19); Reply Br. 11-12. According to Appellants'
Specification, the problem being solved is one of automating and
simplifying business process verification. Spec. ,r,r 5, 7-9, 19, 22-23, 40,
53-54. Specifically, paragraph 40 discloses that "action agents 300 could be
configured to verify a host of other business processes such as, for example,
to simulate human actions." Spec. ,r 40. Paragraph 53 discloses that "[t]he
framework of the present invention also provides a solution for verifying
scenarios (functional verification and performance evaluation) that typically
requires manual verification or requires predefined setup of automated
testing." Spec. ,r 53 (emphasis added). Using a computer to automate a
process does not add significantly more to the abstract idea. See Intellectual
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Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) ("[O]ur precedent is clear that merely adding computer functionality
to increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.").
Appellants argue many of the dependent claims separately but present
substantively similar arguments for each group of separately argued claims.
App. Br. 15-20; Reply Br. 12-13. Specifically, Appellants merely
reproduce or paraphrase the additionally recited limitations and assert,
without further explanation, that the additional limitation(s): (1) are not
well-understood, routine, and conventional; (2) improve a technology or
technical field; and (3) require certain elements ( e.g., the recited function or
a look-up table), "which include[] meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment." App. Br. 15-20; Reply Br. 12-13.
The additional limitations recited in the dependent claims simply
refine the abstract idea by: further defining the particular information
obtained (claims 2, 5, 18, 20) or how information is stored (claims 8, 18) and
communicated ( claims 11, 18); reciting multiple elements ( claims 3, 9);
reciting particular element configurations ( claim 13 ); repeating steps ( claims
15, 17); and placing conditions on steps ( claim 21 ). These limitations,
therefore, are part of the abstract idea and do not provide elements in
addition to the abstract idea sufficient to transform the claims into eligible
subject matter. See Alice, 134 S. Ct. at 2355.
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Summary of Re} ection under 3 5 US. C. § 101
For the above reasons, we determine the Examiner did not err in
rejecting claims 1-15 and 17-21 under 35 U.S.C. § 101 as being directed to
judicially excepted subject matter.
THE 35 U.S.C. § 103 REJECTIONS
The Examiner finds the combination of Slaughter and Thain teaches
or suggests every limitation recited in claims 1-15, 17, and 21 and the
combination of Slaughter, Thain, and Todd teaches or suggests every
limitation recited in claims 18-20. Final Act. 7-17. Appellants argue
independent claim 1 is patentable over the combination of Slaughter and
Thain. App. Br. 21-22. Appellants separately argue the patentability of
dependent claims 7, 9, 1 7, and 21 over the combination of Slaughter and
Thain and dependent claim 19 over the combination of Slaughter, Thain, and
Todd. App. Br. 21-27. Appellants argue dependent claims 2-6, 8, 10-15,
18, and 20 are patentable over the cited combination because each claim
ultimately depends from claim 1. App. Br. 26-27.
Rejection of Claim 1
Of particular note with respect to claim 1, the Examiner finds Thain
teaches or suggests the "ninth program instructions to invoke a second action
agent when it is determined that the business process cannot be completely
verified by the action agent which is responsible for the particular
verification function," recited in claim 1. Final Act. 9; Ans. 8. More
specifically, the Examiner finds Thain's probes teach or suggest the recited
action agents and Thain discloses using multiple probes to relay data to
agent 140, which the Examiner maps to the recited "primary agent." Final
Act. 8-9 (citing Thain ,r,r 8, 31, 33, 58---61, Fig. 6), 20. The Examiner finds
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Thain discloses monitoring extended business transactions, which includes
probes that measure information about an application over time and relay the
data back to an agent and Thain teaches invoking an additional probe when
necessary to monitor the particular extended business transaction. Ans. 8
(citing Thain ,r,r 4--5, 30, 33, 40, 54, 58-59, 61-62, Fig. 7).
Appellants argue Thain's probes all "relay data to a single agent 140"
and "Thain does not disclose invoking a second action agent when it is
determined" the first action agent cannot completely verify the business
process. App. Br. 21; Reply Br. 13-14. Appellants also argue Slaughter
does not cure the alleged deficiency in Thain. App. Br. 21-22.
The Examiner finds Thain's agent teaches or suggests the recited
primary agent and Thain's probes teach or suggest the recited action agents.
Final Act. 8-9 (citing Thain ,r 8, 31); Ans. 8. 1 Thus, Appellants' arguments
do not address the Examiner's findings. Appellants fail to persuasively
explain why Thain's multiple probes do not teach or suggest the recited
action agents and present no other arguments distinguishing claim 1 from the
Examiner's proposed combination. Thus, we are not persuaded the
Examiner erred in rejecting claim 1 as obvious in view of Slaughter and
Thain.
Rejection of Claim 7
The Examiner finds Slaughter teaches a service manager "configured
to de-couple the one or more primary agents from the one or more action
agents," as recited in claim 7. Final Act. 12 (citing Slaughter 16:18-30);
Ans. 9 (additionally citing Slaughter 16:31-55, 17:21-50). Appellants argue
1 Although the Examiner does not find Thain's agent teaches the recited
action agents, we note Thain discloses multiple agents. See Thain ,r 62.
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Slaughter is directed to searching for documents in a distributed computing
environment and the cited sections of Slaughter simply teach "a take method
... to return an object and remove it from space" and a distributed
computing model combining a messaging system with XML messages and
object representations. App. Br. 22; Reply Br. 15.
We agree with the Examiner that Slaughter disclosures separating
clients from the services. See Slaughter 16:50-55. Slaughter also discloses
separating clients, services, and a "space server." See Slaughter 17:43--48
("clients 110 and services 112 may or may not reside within the same
network device ... no particular platform is required for the devices to
support the clients and services"). We agree with the Examiner that
Slaughter's disclosure of separating the clients and services teaches de-
coupling the clients and services. The rejection of claim 7 is based on a
combination of Slaughter and Thain. Specifically the Examiner finds
Slaughter teaches de-coupling services and clients, and Thain teaches the
recited primary and action agents. Thus, it is the combination of Slaughter
and Thain that teaches the recited function of de-coupling the primary and
action agents.
Appellants present no other arguments distinguishing claim 7 from the
Examiner's proposed combination. For the above reasons, we agree with the
Examiner's findings and conclusion that claim 7 would have been obvious in
view of Slaughter and Thain.
Rejection of Claim 9
The Examiner finds Slaughter teaches adding agents or new business
processes without disrupting an existing test run. Final Act. 12 (citing
Slaughter 16:18-30); Ans. 7. Appellants argue Slaughter's disclosed write
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method provided by a messaging layer that may translate an object into an
XML representation does not teach adding agents or a business process.
App. Br. 23; Reply Br. 15.
We agree with Appellants that Slaughter's cited disclosure does not
teach or suggest adding "at least one of a new primary agent, new action
agent and new business processes," as recited in claim 9. As Appellants
argue, Slaughter's cited portion merely discloses using a messaging layer to
add, find, or retrieve and remove XML representations of an object to a
space. See Slaughter 16: 18-30. Slaughter discloses that spaces may be
"object repositories" or a location for content in a distributed computing
environment and, more specifically, "a space may be a repository of XML
advertisements of services and/or XML data, which may be raw data or
advertisements for data, such as results." Slaughter 7: 65-8: 11.
The Examiner has not explained how Slaughter's disclosure of using a
message-passing layer to manage objects in a space teaches or suggests
adding a new agent or business process. 2 To the extent the Examiner finds
the cited disclosures simply teach adding and removing objects from a
repository, the Examiner has not sufficiently explained either (1) how the
cited disclosure would be combined with the other cited disclosures in
Slaughter and/or Thain to teach the disputed limitation or (2) provided a
sufficient reason a person of ordinary skill in the art would have modified or
combined the cited disclosure to arrive at the disputed limitation.
2 Should this matter undergo further prosecution, we leave to the Examiner
to determine whether Thain's disclosure of "add[ing] code for one or more
agents and probes to the application" would teach or suggest the limitations
recited in claim 9 and whether it would have been obvious to combine this
teaching with the Examiner's proposed combination. Thain ,r 62.
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For the above reasons, we are persuaded the Examiner erred in
rejecting claim 9 as obvious in view of the combination of Slaughter and
Thain.
Rejection of Claim 17
The Examiner finds Thain teaches a complex business processes
comprising more than two processes that cannot be verified by a single agent
because Thain discloses using multiple probes to monitor an extended
business process over time. Final Act. 14--15 (citing Thain ,r,r 31, 33, 58-61;
Fig. 6); Ans. 9 (additionally citing Thain ,r 62 and referring to claim 1
analysis). Similar to the arguments regarding claim 1, Appellants argue
Thain only discloses a single agent and therefore cannot disclose "a complex
business process ... that cannot be verified by a single action agent." App.
Br. 24; Reply Br. 16.
For the same reasons discussed above with respect to claim 1, we are
not persuaded the Examiner erred in rejecting claim 17. Specifically, the
Examiner finds Thain discloses using multiple probes to monitor an
extended business practice. Final Act. 14--15. The Examiner finds Thain's
probes, not Thain's agent, teach or suggest the recited action agents. See
Final Act. 8. Regardless of whether Thain uses multiple agents, which the
Examiner finds teach the recited primary agent, Thain explicitly discloses
using multiple probes to monitor a process. Thus, Appellants' arguments do
not address the Examiner's findings. Appellants have not persuasively
explained why Thain's disclosure of monitoring an extended business
process using multiple probes fails to teach or suggest the recited complex
business process that cannot be verified by a single action agent. Appellants
present no other arguments distinguishing claim 1 7 from the Examiner's
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proposed combination. Thus, we agree with the Examiner's findings and
conclusion that claim 17 would have been obvious in view of Slaughter and
Thain.
Rejection of Claim 19
The Examiner finds Slaughter teaches verifying the business
processes is "part of a test phase for" a SOA quality assurance program.
Final Act. 17 (citing Slaughter 16:31-55); Ans. 9-10 (additionally citing
Thain ,r,r 26, 55-56). Appellants argue Slaughter provides a search facility
and Thain monitors managed applications using probes and alerts based on
exceeding time thresholds without receiving a message, but neither
Slaughter nor Thain discloses performing these functions as part of a test
phase. App. Br. 26-27; Reply Br. 16.
Claim 19's recitation that the verifying instruction "a part of a test
phase for a service oriented architecture (SOA) quality assurance program"
is merely an intended use of the instruction. It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) ("The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from prior art,
can not impart patentability to claims to the known composition."); see also
In re Sinex, 309 F.2d 488,492 (CCPA 1962) (statement of intended use in
an apparatus claim failed to distinguish over the prior art apparatus); In re
Hack, 245 F .2d 246, 248 (CCP A 1957) ("the grant of a patent on a
composition or machine cannot be predicated on a new use of that machine
or composition"); In re Benner, 174 F.2d 938, 942 (CCPA 1949) ("no
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provision has been made in the patent statutes for granting a patent upon an
old product based solely upon discovery of a new use for such product").
For the above reasons, we are not persuaded the Examiner erred in
rejecting claim 19 as obvious in view of the combination of Slaughter,
Thain, and Todd.
Rejection of Claim 21
The Examiner finds Thain teaches verifying the business processes
"without performing playback of the business process" because Thain
discloses agents that measures information without changing the business
logic. Final Act. 15 ( citing Thain ,r 31 ); Ans. 7 ( explaining the application
still runs while performing the verification). Appellants argue that, although
Thain's probes, installed in application bytecode, measure specific
information without changing business logic, Thain does not teach "the
action agent verifies logic of the particular business process without
performing playback of the business process." App. Br. 25; Reply Br. 16-
17.
Appellants assert Thain's disclosure "is different from" the recited
limitation, but does not persuasively explain why Thain's disclosure fails to
teach or suggest the recited limitation. Specifically, claim 21 merely adds
the requirement that verification performed by the action agent, as recited in
claim 1, is done "without performing playback of the business process."
Appellants do not present a construction of "performing playback of the
business process," or any other argument, demonstrating Thain teaches
performing the verification function only with ( or while) performing
playback of the business process. We see nothing in the cited portions of
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Thain to suggest that Thain requires playback of a business process to
monitor the extended business processes.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 21 as obvious in view of the combination of Slaughter and
Thain.
Rejection of Claims 2-6, 8, 10-15, 18, and 20
As explained above, Appellants do not argue the patentability of
claims 2-6, 8, 10-15, 18, and 20 separately with particularity. Accordingly,
for the reasons discussed above, we are not persuaded the Examiner erred in
rejecting claims 2---6, 8, and 10-15 as obvious in view of the combination of
Slaughter and Thain and claims 18 and 20 as obvious in view of the
combination of Slaughter, Thain, and Todd.
Summary of Rejections under 35 US. C. § 103
For the above reasons, we determine the Examiner did not err in
rejecting claims 1-8, 10-15, and 17-21 under 35 U.S.C. § 103, but the
Examiner did err in rejecting claim 9 under 35 U.S.C. § 103.
SUMMARY
We affirm the Examiner's decision to reject claims 1-15 and 17-21
under 35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1-8, 10-15, and
17-21 under 35 U.S.C. § 103.
We reverse the Examiner's decision to reject claim 9 under 35 U.S.C.
§ 103.
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DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision to reject claims 1-15 and 17-
21 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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