Ex parte Barhate

• Decision Date: 13 January 2021
• Docket Number: Appeal 2020-005147[1],608,Application 13/425
• Parties: Ex parte CHIRAG K. BARHATE and MAHESH S. PARADKAR Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte CHIRAG K. BARHATE and MAHESH S. PARADKAR Appeal 2020-005147^[1] Technology Center 3600

Application 13/425, 608

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 13, 2021

FILING DATE: 03/21/2012

Before ERIC S. FRAHM, JOHN P. PINKERTON, and BETH Z. SHAW Administrative Patent Judges.

DECISION ON APPEAL

FRAHM Administrative Patent Judge.

STATEMENT OF CASE

Introduction

Appellant^[2] appeals under 35 U.S.C. § 134(a) from a final rejection of claims 30-49. Claims 1-29 have been canceled (see Amendment filed November 8 2019 (p. 2). We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Appellant's Disclosed and Claimed Invention

Appellant's application relates to "the field of data handling and, more particularly, to using the inheritance of professional-social network information to facilitate organizational position changes." Spec. ¶ 1; see also Title ("Using The Inheritance of Professional-Social Network Information to Facilitate Organizational Position Changes"). Appellant claims a "computer hardware system" (claim 30) and a "computer program product" (claim 40) for collecting and monitoring data and then reassigning that data from one employee/user to another.

Exemplary Claim

Independent claim 30 under appeal is exemplary. Claim 30, with emphases added to key portions thereof, reads as follows:

30. A computer hardware system including an electronic communication system connected over a network to a plurality of client devices associated with a plurality of individuals within an organization, comprising:

a hardware processor configured to initiate the following executable operations:

[A] accessing computer data structures comprising:

an organizational model of the organization,

contact lists of the plurality of individuals, and

organizational/member data associated with individual positions represented within the organizational model;

[B] monitoring the plurality of client devices for electronic messages from the plurality of individuals;

[C] generating, for a first user of the plurality of users and based upon the organizational model, a network data structure based upon the organization model, a contact list of the first user, and the organizational/member data, a network data structure assigned to the first user;

[D] updating the network data structure based upon the monitored electronic messages; and

[E] reassigning the network data structure assigned to the first user from the first user to a second user based upon the second user occupying a position within the organizational model previously occupied by the first user, wherein

[F] a network data structure for a particular user is relationship structure in which:

individual contacts of the particular user are represented as nodes and

relationships between particular user and individual contacts of the particular user are represented as edges between the nodes.

Appeal Br. 29-30, Claim Appendix (emphases, formatting, and bracketed lettering added). Remaining independent claim 40 recites a computer program product having limitations commensurate in scope with the computer hardware system of claim 30.

Examiner's Rejections

(1) Claims 30-49 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter (an abstract idea), without significantly more. Final Act. 2-6; Ans. 3-10.

(2) Claims 30, 38-40, 48, 49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hardt (US 2010/0082695 A1; published April 1, 2010), Cheng et al. (US 2010/0185630 A1; published July 22, 2010) (hereinafter, "Cheng"), and Burritt et al. (US 2010/0262550 A1; published Oct. 14, 2010) (hereinafter, "Burritt"). Final Act. 6-10.

(3) Claims 36 and 46 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hardt, Cheng, Burritt, and Nasirifard et al. (US 2010/0299717 A1; published Nov. 25, 2010) (hereinafter, "Nasirifard"). Final Act. 11.

Appellant's Contentions

With regard to the patent eligibility rejection, Appellant argues claims 30-49 as a group, referring to limitations throughout claims 30 and 40, and relying on those arguments for the eligibility of claims 31-49 (see Appeal Br. 8-17; Reply Br. 2-11). Based on Appellant's patent eligibility arguments, and because independent claims 30 and 40 contain commensurate limitations, we select claim 30 as representative of claims 30-49 rejected under 35 U.S.C. § 101 for patent-ineligibility. See 37 C.F.R. §41.37(c)(1)(iv).

With regard to the obviousness rejections of claims, Appellant primarily argues the merits of independent claim 30, and makes similar arguments as to the patentability of remaining claim 38-40, 48, and 49 (see Appeal Br. 17-26; Reply Br. 11-15), as well as dependent claims 36 and 46 (see Appeal Br. 26-27). As to independent claims 30 and 40, Appellant contends, inter alia, (see e.g., Appeal Br. 23-26; Reply Br. 14-15) that the Examiner erred in rejecting claim 30 under 35 U.S.C. § 103(a), because Burritt, and thus the base combination of Hardt, Cheng, and Burritt, fails to teach or suggest reassigning a network data structure from one user to another when the second user takes over the organizational position previously occupied by the first user as set forth in limitation D of claim 30, and as commensurately set forth in remaining independent claim 40.

Principal Issues on Appeal

Based on Appellant's arguments in the Appeal Brief (Appeal Br. 5-27) and the Reply Brief (Reply Br. 2-16), the following principal issues are presented on appeal:

(1) Has Appellant shown the Examiner erred in rejecting representative claim 30, as well as claims 31-49 grouped therewith, under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter (i.e., a judicial exception such as an abstract idea), without significantly more?

(2) Has Appellant shown the Examiner erred in rejecting claims 30, 36, 38-40, 46, 48, and 49 as being unpatentable over the base combination of Hardt, Cheng, and Burritt, because Burritt fails to teach or suggest limitation D, as recited in claim 30, and as commensurately recited in claim 40?

ANALYSIS

First Issue: Patent Eligibility Under 35 U.S.C. § 101

Section 101 of the Patent Act provides "[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. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014).

In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk "); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk.").

Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract... is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.").

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 (citation 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. (alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] ...