BMC Software, Inc.Download PDFPatent Trials and Appeals BoardMay 21, 202013930466 - (D) (P.T.A.B. May. 21, 2020) Copy Citation 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. 13/930,466 06/28/2013 Vineesh PUTHIYOTTIL 0081-312001/13-011-US 4979 93236 7590 05/21/2020 Brake Hughes Bellermann LLP P.O. Box 1077 Middletown, MD 21769 EXAMINER SWARTZ, STEPHEN S ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 05/21/2020 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): docketing@brakehughes.com uspto@brakehughes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINEESH PUTHIYOTTIL and SAMEER KULKARNI Appeal 2019-004288 Application 13/930,466 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and TARA L. HUTCHINGS, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s Final decision to reject claims 1–20.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies BMC Software, Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-004288 Application 13/930,466 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to “to trouble ticket assignment” (Spec. para. 2). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving a ticket indicating a problem; generating an auction for the ticket; generating a plurality of messages based on the auction; communicating the plurality of messages to a plurality of agents as participants in the auction; receiving at least two responses to resolve the problem from at least two agents, the at least two responses including one of a bid, a hold, and a no bid, the bid including a time to resolution; determining if there is a conflict between two or more bids; upon determining there is a conflict between the two or more bids: resolving the conflict between the two or more bids based on a coefficient of deviation for each of the agents who responded, wherein the coefficient of deviation is calculated based on an estimated time for resolution for at least one completed ticket and an actual completion time for the at least one completed ticket; and allocating the ticket to one of the plurality of agents based on the resolved conflict, wherein the coefficient of deviation for an agent who responded is calculated using: Appeal 2019-004288 Application 13/930,466 3 REJECTION Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. OPINION Appellant argues these claims as a group. See Appeal Br. 18–27. We select claim 1 as the representative claim for this group, and the remaining claims 2–20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Preliminary comment Our following analysis will comport with the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance”. Previous guidance such as the Office’s 2014 Interim Guidance on Patent Subject Matter Eligibility (cited at Appeal Br. 19) have been superseded by the 2019 Revised 101 Guidance, 84 Fed. Reg. at 51 (“Eligibility–related guidance issued prior to the Ninth Appeal 2019-004288 Application 13/930,466 4 Edition, R–08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”) Introduction 35 U.S.C. § 101 provides that “[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.” In that regard, claim 1 covers a “process” and is, thus, statutory subject matter for which a patent may be obtained.2 This is not in dispute. However, the § 101 provision “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In that regard, notwithstanding claim 1 covers statutory subject matter, the Examiner has raised a question of patent–eligibility on the ground that claim 1 is directed to an abstract idea. Alice identifies a two-step framework for determining whether claimed subject matter is directed to an abstract idea. Id. at 217. Alice step one – the “directed to” inquiry According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Id. at 218 (emphasis added). 2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which requires determining whether “a claim is to a statutory category.” Id. at 53. See also sentence bridging pages 53 and 54 (“consider[ ] whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101 . . . .”). Appeal 2019-004288 Application 13/930,466 5 The Examiner determined that claim 1 is directed to, inter alia, “managing task assignments through bidding and handling conflict.” Final Act. 9; see also Ans. 3. Appellant disagrees, arguing inter alia that The Examiner's Answer misunderstands or misinterprets Claim 1 and its technical impact. The primary purpose of claim 1 is not to manage, reward, or organize individual agents, but to marshal the best resources to resolve a problem in the IT infrastructure of an organization. A time to resolution of the problem is of concern when restoring the IT infrastructure (see e.g., Specification ¶ [0003]). Claim 1 enables the best resources (i.e., the most capable and efficient agents) to be directed to efficiently resolve service issues/tickets in the IT infrastructure in a timely manner. While Claim 1 may describe a procedure (i.e., a self-selecting auction) for selecting the best capable service agents for resolving the problem service issues/tickets, the primary focus of Claim 1 is clearly on resolving the problem in the IT infrastructure in a timely manner and not on organizing the behaviour of the service agents. Reply Br. 2–3. See also Appeal Br. 25 (cited at Reply Br. 2) (“Appellant notes that Claim 1 describes a practical solution for efficiently resolving service issues/tickets in an IT Infrastructure of an organization by allocating service tickets individually to agents having the right skills to efficiently resolve the service issues/tickets.”) Accordingly, there is a dispute over whether claim 1 is directed to an abstract idea. Specifically, is claim 1 directed to “managing task assignments through bidding and handling conflict” (Final Act. 9) or “to marshal the best resources to resolve a problem in the IT infrastructure of an organization” (Reply Br. 2). Appeal 2019-004288 Application 13/930,466 6 The Abstract Idea3 Above, where we reproduce claim 1, we identify in italics the limitations we believe recite an abstract idea.4 We determine that the identified limitations describe a scheme for managing tasks, specifically assigning trouble tickets. Managing tasks, albeit in this case involving trouble tickets, is a fundamental economic practice. It falls within the enumerated “[c]ertain methods of organizing human activity” grouping of abstract ideas set forth in the 2019 Revised 101 Guidance.5 On pages 24–25 of the Appeal Brief, Appellant states that 3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A determines “whether a claim is ‘directed to’ a judicial exception,” such as an abstract idea. Step 2A is two prong inquiry. 4 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101 Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the Examiner believes recites an abstract idea . . . .” 2019 Revised 101 Guidance, 84 Fed. Reg. at 54. 5 This corresponds to Prong One (“Evaluate Whether the Claim Recites a Judicial Exception”) (b) of Step 2A of the 2019 Revised 101 Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: . . . (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the [2019 Revised 101 Guidance].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 54. This case implicates subject matter grouping “(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” Id. at 52. Appeal 2019-004288 Application 13/930,466 7 the first eight clauses of Claim 1 … do not recite subject matter that can be categorized as being in any of the three enumerated groupings of subject matter that is considered to be an abstract idea (i.e., "Mathematical concepts", "Certain methods of organizing human activity" and "Mental processes") defined in PEG 2019. Also, according to Appellant, “[t]he ninth clause of Claim 1 (which describes allotting a ticket to one of the plurality of agents based on resolving the conflict between the two or more bids) does not represent fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people.” Appeal Br. 25. We are unpersuaded by Appellant’s argument. Managing tasks is a business practice that has been around for hundreds of years, amounting to a fundamental economic practice. That the claimed process implements such a practice via a scheme for assigning trouble tickets does not make the claim any less directed to an abstract idea. It simply limits the abstract idea (managing tasks) to a particular environment. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015). Improvement In the Functioning of a Computer6 (Appellant’s Argument) 6 This corresponds to Prong Two (“If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort Appeal 2019-004288 Application 13/930,466 8 The Examiner’s characterization of what the claim is directed to is essentially the same as ours. We have reviewed the record and are unpersuaded as to error in the Examiner’s characterization of what claim 1 is directed to. Appellant’s central argument concerning computer technology has been fully considered but the principal difficulty with Appellant’s position is that it is not commensurate in scope with what is claimed. “Many of appellant’s arguments fail from the outset because, . . . they are not based on limitations appearing in the claims . . . .” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Cf. In re Jobin, 2020 WL 2298381, at *4 (Fed. Cir. 2020) (“We reject Jobin’s arguments to the contrary, which amount to nothing more than conclusory statements unmoored from specific claim language.”) For example, Appellant respectfully submits that the claims at issue here recite patent-eligible subject matter not because they recite generic computer components, but because they recite a “non- conventional and non-generic arrangement [or use] of known, conventional pieces” that improves computer-related technology or other technical field. Appeal Br. 22. But there is no mention or suggestion of any computer technology in claim 1. Nor does claim 1 recite elements (e.g., “known, conventional pieces”) which could be construed as potentially affecting designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 54. One consideration, implicated here, that is “indicative that an additional element (or combination of elements)[] may have integrated the exception into a practical application” (id. at 55) is if “[a]n additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” (id. at 55). Appeal 2019-004288 Application 13/930,466 9 computer-related technology. In fact, the claimed subject matter as set forth in claim 1) is not tied to any particular machine. Also, Appellant notes that Claim 1 describes a practical solution for efficiently resolving service issues/tickets in an IT Infrastructure of an organization by allocating service tickets individually to agents having the right skills to efficiently resolve the service issues/tickets. Appeal Br. 25. But there is no mention or suggestion of an IT infrastructure in claim 1. Appellant adds that “[t]he practical application of Claim 1 results in improvement to the functioning of computers (i.e., the IT infrastructure of an organization). MPEP 2106.05(a).” Id. Again, there is no computer mentioned in claim 1. Arguments such as these — that direct our attention to improvements to the functioning of computers — cannot persuade us as to error in a rejection made under § 101 for patent-eligibility if the claimed subject matter is not limited to computers. Similarly, the Reply Brief speaks of a “system problem.” See Reply Br. 3 (“the claimed subject matter is integrated into the practical application of timely resolving the system problem.”) According to Appellant, “‘Claim 1 results in improvement to the functioning of computers’ (i.e., by timely maintenance of, and resolution of service issues in, the IT infrastructure of the organization).” Reply Br. 2 (quoting Appeal Br. 25). See also id. at 2–3. The Examiner’s Answer misunderstands or misinterprets Claim 1 and its technical impact. The primary purpose of claim 1 is not to manage, reward, or organize individual agents, but to marshal the best resources to resolve a problem in the IT infrastructure of an organization. A time to resolution of the Appeal 2019-004288 Application 13/930,466 10 problem is of concern when restoring the IT infrastructure (see e.g., Specification ¶ [0003]). Claim 1 enables the best resources (i.e., the most capable and efficient agents) to be directed to efficiently resolve service issues/tickets in the IT infrastructure in a timely manner. While Claim 1 may describe a procedure (i.e., a self-selecting auction) for selecting the best capable service agents for resolving the problem service issues/tickets, the primary focus of Claim 1 is clearly on resolving the problem in the IT infrastructure in a timely manner and not on organizing the behaviour of the service agents. But there is no computer mentioned in claim 1. Because there is no computer mentioned, let alone an IT infrastructure, we are not put in a position to determine whether claim 1 is directed away from an abstract idea for being directed to the technical impact of timely resolving a system problem as Appellant asserts. We are not placed in a position to determine whether, within the meaning of the 2019 Revised 101 Guidance, there is integration into a practical application, on the ground that the claimed method improves computer technology, as Appellant argues, because claim 1 is not so limited. We have considered Appellant’s other arguments challenging the Examiner’s determination under step one of the Alice framework and find them unpersuasive. For the foregoing reasons, the record supports the Examiner’s determination that claim 1 is directed to an abstract idea. Alice step two – Does the Claim Provide an Inventive Concept?7 Step two is “a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in 7 This corresponds to Step 2B of the 2019 Revised 101 Guidance (see 84 Fed. Reg. at 56). “[I]f a claim has been determined to be directed to a Appeal 2019-004288 Application 13/930,466 11 practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 73). In that regard, the Examiner determined, inter alia, that: the additional elements of claims (1-13) and (14-20) are identified as a server, a network, and a non-transitory computer readable medium. The specification further points to a personal computer, and processor. These additional elements are not sufficient to amount to significantly more than the judicial exception because they do not recite, for example: an improvement to another technology or technical field; improvements to the functioning of the computer itself; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment (Note: this is not an exhaustive list). The determination that the elements do not amount to significantly more than the abstract idea is supported by the finding that the specification and the current claims are silent regarding any improvements to the functioning of the computer itself or the need for a particular machine on which to apply the abstract idea. No particular machines are explicitly involved in accomplishing the abstract idea as can be seen in specification par. [0006], and par. [0019], the computer systems may include appropriate memory and storage device and as can be seen in the cited portion of the specification the invention uses a generic machine to perform the steps of the invention. The claims do not include additional elements that are sufficient to amount to judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).” Appeal 2019-004288 Application 13/930,466 12 significantly more than the judicial exception because the additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. Generic computer features such as a processing devices, processing systems performing generic computer functions, and tangible computer readable storage medium do not amount to significantly more than the abstract idea. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Final Act. 13–14. For its part, Appellant argues that “even if the individual elements may be conventional, at least the combination of elements in the claims (viewed as a whole) is unconventional.” App. Br. 26. Our difficulty is that Appellant does not explain and we are unclear what “elements” Appellant is referring to. Notwithstanding the Examiner refers to “a server, a network, and a non-transitory computer readable medium,” claim 1 does not in fact mention any of those elements. No other persuasive arguments having been presented, we conclude that no error has been committed in the determination under Alice step two that claim 1 does not include an element or combination of elements circumscribing the patent-ineligible concept it is directed to so as to transform the concept into an inventive application. We have considered all of the Appellant’s arguments (including those made in the Reply Brief) and find them unpersuasive. Accordingly, because we are not persuaded as to error in the determination that representative claim 1, and claims 2–5 and 11–15 which stand or fall with claim 1, are directed to an abstract idea and do not present an “inventive concept,” we sustain the Examiner’s conclusion that they are Appeal 2019-004288 Application 13/930,466 13 directed to patent-ineligible subject matter for being judicially-excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 Fed. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s remaining arguments and have found them unpersuasive. Accordingly, because the asserted claims of the patents in suit are directed to an abstract idea and do not present an ‘inventive concept,’ we hold that they are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For the foregoing reasons, we are unpersuaded as to error in the rejection. CONCLUSION The decision of the Examiner to reject claims 1–20 is affirmed. More specifically: Claims 1–20 rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 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 Copy with citationCopy as parenthetical citation