Ex Parte PROW et al

Patent Trials and Appeals Board

Jul 27, 2018

12907436 - (D) (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/907,436 10/19/2010
5251 7590 07/31/2018
SHOOK, HARDY & BACON LLP
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BL VD
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
GREGR.PROW
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.
RMNS.156991 2004
EXAMINER
CHOY,PANG
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
BPARKERSON@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG R. PROW, MIKKEL WILLIAM LANTZ, and
DOUGLAS WILLIAM BARON
Appeal2017-002534
Application 12/907 ,4 3 6
Technology Center 3600
Before JOHN A. EVANS, LINZY T. McCARTNEY, and
NORMAN H. BEAMER, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from rejections of claims 1-
3, 5-7, 9-11, 13-17, 19, and 20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2017-002534
Application 12/907,436
CLAIMED INVENTION
Claims 1, 11, and 20 are independent. Claim 1 illustrates the claimed
subject matter:
1. One or more non-transitory computer storage media
storing computer-useable instructions that, when executed by
one or more computing devices, cause the one or more
computing devices to perform a method comprising:
storing, by a change memo server, an indication of an
electronic reference, the electronic reference being directed to a
legal requirement or other guideline that impacts a function of an
enterprise resource planning (ERP) system;
accessing, by the change memo server, a current version
of the electronic reference from a content server over one or more
communication networks;
identifying, by the change memo server, a change in the
electronic reference by electronically comparing the current
version of the electronic reference with a previous version of the
electronic reference;
creating, by the change memo server, a change memo
based on the identified change, the change memo comprising a
record that includes the identified change;
storing, by the change memo server, the change memo in
a change memo data store storing a plurality of change memos;
tracking, by the change memo server, a review status of
the change memo during a review process to determine whether
the identified change corresponds with a change to the legal
requirement or other guideline that requires an update to the ERP
system;
receiving, by the change memo server, information
identifying one or more additional references confirming the
identified change corresponds with a particular change to the
legal requirement or other guideline that impacts the ERP
system;
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Application 12/907,436
validating, by the change memo server, the identified
change based on the information identifying the one or more
additional references;
receiving, at the change memo server, an indication that
the identified change corresponds with the particular change to
the legal requirement or other guideline that impacts the ERP
system; and
in response to receiving the indication, prompting, by the
change memo server, an update to the ERP system based on the
particular change to the legal requirement or other guideline that
impacts the ERP system.
REJECTIONS
1-3, 5-7, 9-11, 13-17, § 101
19,20
1-3, 5-7, 9-11, 13-17, § 103
19,20
DISCUSSION
§ 101 Re} ection
Kennis 1 and Smith2
Under § 101 of the Patent Act, "[ w ]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title." 35 U.S.C. § 101.
"[T]his provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court
1 Kennis et al. (US 2006/0212486 Al; Sept. 21, 2006).
2 Smith (US 6,996,601 Bl; Feb. 7, 2006).
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Appeal2017-002534
Application 12/907,436
has set forth the following two-step test for determining whether a patent
claim falls within one of these exceptions:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, we 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. We have 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, 134 S. Ct. at 23 55 ( citations omitted) ( quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73, 77-79 (2012)).
Applying this test, the Examiner determined claim 1 is directed to the
abstract idea of "change memo management." Relying on the Federal
Circuit's SmartGene3 and Cyberfone4 decisions and Appellants' written
description, the Examiner explained that claim 1 is directed to an abstract
idea because the claim recites steps a person can perform mentally or using
pen and paper. Ans. 5-7. The Examiner then determined that claim 1 does
not recite an "inventive concept" because the recited servers are "nothing
more than a generic computer" that perform certain well-understood,
routine, and conventional functions. Ans. 7-9.
Appellants argue the Examiner failed to establish claim 1 is directed
to an abstract idea. Br. 9. According to Appellants, the Examiner should
3 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 951
(Fed. Cir. 2014).
4 Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 990
(Fed. Cir. 2014).
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Appeal2017-002534
Application 12/907,436
have relied on "textbooks of computer science, economics, engineering,
etc." to show claim 1 is directed to a "fundamental building block[] of
human ingenuity." Br. 10. Appellants also contend the Examiner failed to
consider claim 1 as a whole. Br. 10-14.
We find Appellants' arguments unpersuasive. Contrary to
Appellants' arguments, the Examiner was not required to cite textbooks to
establish claim 1 is directed to an abstract idea. It is sufficient-indeed,
generally preferable-for an examiner to rely on court decisions for support.
See, e.g., Manual of Patent Examining Procedure§ 2106.07(a) (explaining
that "[ c Ji ting to an appropriate court decision that supports the identification
of the subject matter recited in the claim language as an abstract idea is a
best practice"); Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) ("Instead of a definition, then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided."). Here, as noted above, the Examiner relied
on the Federal Circuit's SmartGene and Cybeifone decisions to show
claim 1 is directed to an abstract idea because the claim recites steps a
person can perform mentally or using pen and paper. Ans. 5-7. The
Examiner also relied on Appellants' written description. See Ans. 6-7
( citing Spec. ,r,r 35-36). Appellants have not persuasively addressed these
cases or the cited paragraphs of Appellants' written description.
As for Appellants' argument that the Examiner failed to consider
claim 1 as a whole, we see no merit in this argument. The Examiner
repeatedly stated that claim 1 was considered as a whole, see, e.g., Final Act.
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Application 12/907,436
13; Ans. 9, and nothing in the record suggests otherwise. For the above
reasons, agree with the Examiner that claim 1 is directed to an abstract idea.
We tum next to the Examiner's finding that claim 1 does not recite an
"inventive concept." Appellants argue the Examiner erroneously found that
claim 1 recites well-understood, routine, or conventional computer
functions. Br. 15. Appellants assert the recited functions "do not appear in
any widely known industry references, standards, or other publications" and
"do not hinge on generic computer hardware performing generic computer
functions." Br. 16.
We find Appellants' arguments unpersuasive. The Examiner
sufficiently supported the finding that certain claim limitations recite well-
understood functions by pointing to relevant court decisions. The Examiner
observed that courts have recognized receiving, accessing, and storing data
are well-understood, routine, or conventional functions. See Ans. 8 ( citing
July 2015 Update: Subject Matter Eligibility 7 (July 30, 2015),
https://www.uspto.gov/sites/ default/files/ documents/ieg-july-2015-
update. pdf); see also July 2015 Update: Subject Matter Eligibility 7 nn.21,
25 (collecting cases). Based on these cases, the Examiner found claim 1 's
receiving, accessing, and storing steps are well-understood, routine or
conventional functions. Ans. 8. The Examiner also concluded that, in light
of Appellants' written description, the recited servers are generic computing
devices. See Ans. 8-9; see also Spec. 38 (explaining that "[t]he invention
may be practiced in a variety of system configurations, including hand-held
devices, consumer electronics, general-purpose computers, more specialty
computing devices, etc." ( emphasis added)). In light of this, the Examiner's
findings on these points have adequate support in the record.
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Application 12/907,436
Appellants also argue that claim 1 recites an inventive concept
because the claim satisfies the machine prong of the machine-or-
transformation test. Br. 17-18. But as Appellants acknowledge, this test
requires the claimed process be tied to a particular machine or apparatus and
impose meaningful limits on the claim's scope. Br. 17; see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
( determining a claim did not pass the machine-or-transformation test where
the claim was "not tied to any particular novel machine or apparatus, only a
general purpose computer"). Claim 1 does not satisfy this standard. The
recited "computer storage media," "computing devices," and "change memo
servers" and "content servers" encompass generic technology and are not
tied to a particular machine or apparatus. See, e.g., Spec. ,r 3 8 ("The
invention may be practiced in a variety of system configurations, including
hand-held devices, consumer electronics, general-purpose computers, more
specialty computing devices, etc."), ,r 40 ("Computer storage media
includes, but is not limited to ... any other medium which can be used to
store the desired information and which can be accessed by computing
device 100."). This generic technology does not impose any meaningful
limitation on claim 1 's scope.
Finally, Appellants contend claim 1 does not risk preempting the
abstract idea itself. Br. 20. Even assuming Appellants are correct, this fact
does not render claim 1 patent eligible. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility."). Simply limiting an
abstract idea to a particular environment does not make the idea any less
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Application 12/907,436
abstract. See In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016).
For the above reasons, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 101. Because Appellants have not presented separate,
persuasive patentability arguments for the Examiner's rejection of claims 2,
3, 5-7, 9-11, 13-17, 19, and 20 on this ground, we also sustain the
Examiner's rejection of these claims.
§ 103 Rejections
The Examiner rejected claim 1 as obvious over Kennis and Smith.
Final Act. 14--20. Appellants argue this combination fails to teach each
limitation recited in claim 1. Br. 21-24.
We find Appellants' arguments unpersuasive. Appellants' arguments
generally consist of characterizing what a particular reference is "directed
to" or "concerned with" and asserting that reference does not teach the
limitation in question. Br. 21-24. Appellants do not mention, much less
persuasively address, each section of the art cited by the Examiner. See Br.
21-24. This is insufficient to establish the Examiner erred. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."). Moreover,
Appellants' arguments generally address Kennis and Smith individually,
despite the Examiner concluding a combination of the references teaches or
suggests the subject matter recited in claim 1. "[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
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Application 12/907,436
rejections are based on combinations of references." In re Keller, 642 F.2d
413,426 (CCPA 1981).
For the above reasons, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103. Because Appellants have not presented separate
arguments for claims 2, 3, 5-7, 9-11, 13-17, 19, and 20 on this ground, we
also sustain the Examiner's rejection of these claims.
1-3, 5-7, 9- § 101
11, 13-17,
19,20
1-3, 5-7, 9- § 103
11, 13-17,
19,20
Summary
CONCLUSION
Kennis and
Smith
1-3 5-7 9-, '
11, 13-17,
19,20
1-3 5-7 9-, '
11, 13-17,
19,20
1-3 5-7 9-, '
11, 13-17,
19,20
No 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)(l )(iv).
AFFIRMED
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