Ex Parte Banerjee et al

Patent Trials and Appeals Board

Sep 24, 2018

13654564 - (D) (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/654,564 10/18/2012
75739 7590 09/26/2018
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
FIRST NAMED INVENTOR
Dipyaman Banerjee
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.
IN920120 l 63US 1 7996
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
CTOFFICE@RML-LA W.COM
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIPY AMAN BANERJEE, GARGI B. DASGUPTA,
and NIRMIT V. DESAI
Appeal2017-006667
Application 13/654,564 1
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-5, 7-14, and 16-20. Claims 2, 6, and 15 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as "International Business
Machines Corporation." (App. Br. 3.)
Appeal2017-006667
Application 13/654,564
THE INVENTION
Appellants' invention relates to staffing costs and, particularly,
"allocating service consumers to resource pools." (Spec. 3:21-25.)
Claim 1 is reproduced below.
1. A method for allocating a single account and/ or
multiple accounts among at least one resource pool, the method
compnsmg:
[a] creating a set of customer account allocations by
assigning multiple customer account combinations from a set of
customer accounts among a given set of resource pools;
[b] using a list of constraints to filter out one or more of
the multiple customer account combinations wherein two or
more accounts cannot be grouped together due to a security
ISsue;
[ c] computing a compatibility score for each of the
customer account allocations, wherein a higher compatibility
score indicates an increased likelihood that a given customer
account allocation is compatible with a given resource pool, by
comparing a profile of a resource pool and a profile of each
customer account assigned to the resource pool in the customer
account allocation based on:
[i] a workload parameter for each of the resource
pools in the given set of resource pools, wherein the
workload parameter for a given resource pool represents
a pattern in which workload arrives to the given resource
pool per one or more given temporal parameters, wherein
said pattern is derived from individual workload patterns
of individual customer accounts within the given
resource pool, and wherein the workload parameter of a
given resource pool and a given customer account
increases the compatibility score if, after the inclusion of
the given customer account in the given resource pool,
the risk of a service level agreement violation in the
given resource pool is below a predetermined threshold;
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[ii] a demographics parameter for each of the
resource pools in the given set of resource pools, wherein
the demographics parameter for a given resource pool
comprises a consideration of (i) human skills associated
with the given resource pool, (ii) one or more timing
variables associated with existing customer accounts
within the given resource pool, and (iii) existing service
level agreement attainments associated with the given
resource pool; and
[iii] an effort parameter for each of the resource
pools in the given set of resource pools, wherein the
effort parameter for a given resource pool comprises a
length of time measured in work hours required by the
given resource pool to perform work associated with
existing customer accounts within the given resource
pool, and wherein the effort parameter of a given
resource pool and a given customer account increases the
compatibility score if the time to perform work
associated with the given customer account adds an
amount of time less than a pre-determined amount to the
existing effort parameter of the given resource pool;
[ d] simulating execution of a pre-determined number of
the customer account allocations, wherein the pre-determined
number is based on a compatibility score threshold;
[ e] selecting one of the customer account allocations
based on the simulated execution, wherein the selected
customer account allocation satisfies one or more parameters
comprising at least maintaining an average resource utilization
in the set of resource pools under a predefined threshold; and
[ fJ allocating the set of customer accounts among the set
of resource pools in accordance with the selected customer
account allocation;
[g] wherein the steps are carried out by at least one
computer device.
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Application 13/654,564
REJECTIONS
Claims 1, 3-5, 7-14, and 16-20 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
ANALYSIS
We are unpersuaded by Appellants' arguments (App. Br. 11-19; see
also Reply Br. 3-7) that independent claims 1, 11, 19, and 20 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner found that "[ t ]he above elements [ of claim 1] are
similar to ideas that have been held Abstract by the courts." (Ans. 8.) In
particular, the Examiner found that "[i]n the instant case, the compatibility
score is computed using an algorithm that considers multiple parameters ( a
workload parameter, a demographics parameter and an effort parameter)"
and "is similar [to Electric Power Group] in that information is analyzed
using an algorithm to determine an optimal account allocation which can be
considered essentially mental processes within the abstract-idea category."
(Id.) The Examiner further found that "the computer device is recited at a
high level of generality and its broadest reasonable interpretation comprises
only a microprocessor to perform the generic computer functions of:
computing, simulating, selecting and allocating" as "evidenced by
[paragraph] 40 of the Applicant's specification [US 2014/0114 719] that
states an aspect of the present invention can make use of software running
on a general purpose computer or workstation." (Id. at 9.) We agree with
the Examiner's findings and ultimate conclusion that claim 1 is directed to
patent-ineligible subject matter.
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A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this "provision
contains an important implicit exception: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work."). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).
In Mayo, the Court stated that "to transform an unpatentable law of nature
into a patent-eligible application of such a law, one must do more than
simply state the law of nature while adding the words 'apply it."' Mayo, 566
U.S. at 72 (internal citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id.
If the claims are directed to a patent-ineligible concept, then the
second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination'" to determine whether the
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additional elements "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the
second step is to "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."' Id. (brackets in original) (quoting Mayo, 566 U.S. at 72-
73). "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. at 2357 (brackets in original) (quoting
Mayo, 566 U.S. at 77-78). The prohibition against patenting an abstract
idea "cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment or adding insignificant post-
solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal
citation and quotation marks omitted). The Court in Alice noted that
"' [ s ]imply appending conventional steps, specified at a high level of
generality,' was not 'enough' [in Mayo] to supply an 'inventive concept."'
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83, 77-78, 72-73).
Alice Step One: Are the claims at issue
directed to a patent-ineligible concept?
Independent claim 1 is a method claim, which recites, in part, the
following: "[i] a workload parameter for each of the resource pools in the
given set of resource pools ... ," "[ii] a demographics parameter for each of
the resource pools in the given set of resource pools ... ," and "[iii] an effort
parameter for each of the resource pools in the given set of resource
pools ... " Such method steps of claim 1 are directed to a patent-ineligible
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abstract idea of collecting data. See, e.g., Elec. Power Grp. v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting information, including
when limited to particular content ( which does not change its character as
information), as within the realm of abstract ideas.")
Independent claim 1 further recites: "[a] creating a set of customer
account allocations," "[b] using a list of constraints to filter out one or more
of the multiple customer account combinations," "[ c] computing a
compatibility score for each of the customer account allocations," [ d]
"simulating execution of a pre-determined number of the customer account
allocations," "[ e] selecting one of the customer account allocations based on
the simulated execution," and "[f] allocating the set of customer accounts
among the set of resource pools in accordance with the selected customer
account allocation." All of these steps, however, merely involve analyzing
information, which also is an abstract idea. See, e.g., Elec. Power Grp., 830
F.3d at 1353 ("analyzing information ... by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.").
Accordingly, claim 1 is directed to a patent-ineligible abstract idea.
Claim 11, a corresponding article claim, claim 19 a corresponding system
claim, and claim 20, a corresponding method claim, recite limitations similar
to those discussed with respect to claim 1. Thus, claims 11, 19, and 20 are
also directed to a patent-ineligible abstract idea.
Appellants argue that the Examiner provides a "conclusory
characterization" with respect to "to the first part of the Alice/Mayo
framework, [in which] the Examiner ... alleges that the claims are 'directed
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toward a process for allocating accounts to resource pools."' (App. Br. 11;
see also Reply Br. 3.) Contrary to Appellants' arguments, the Examiner has
identified the appropriate judicial exception as concepts relating to tracking
or organizing information and has properly compared the claimed concepts
of independent claim 1 to a prior Federal Circuit decision, Electric Power
Group. (Ans. 8.)
Appellants further argue that "in Rapid Litigation Management, the
Federal Circuit states that a 'new and improved technique, for producing a
tangible and useful result, falls squarely outside those categories of
inventions that are "directed to" patent ineligible concepts."' (App. Br. 13.)
Accordingly, Appellants argue, "the claims are expressly producing a
collection of customer account allocations, and subsequently transforming
that produced collection into an optimized customer account allocation
based on the specific restriction of a computed average resource utilization
across the set of resource pools." (Id. at 12.) However, other than providing
a conclusory statement that the end result of the claims are a "new and
improved technique, for producing a tangible and useful result," Appellants
have not adequately explained why the end result of the claims produces a
tangible and useful result, rather than the patent-ineligible concept of
collecting and analyzing information.
Appellants also argue that "the Examiner has not considered the
specific claim limitations as a whole" (App. Br. 14) because "the Examiner
has oversimplified the claims by looking at them generally (for example, by
alleging that the claims are merely directed to 'allocating accounts to
resource pools') and has failed to account for the (numerous) specific
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requirements of the claim" (id. at 15.) However, as discussed previously,
the Examiner has identified the appropriate judicial exception as concepts
relating to tracking or organizing information and has properly compared the
claimed concepts of independent claim 1 to a prior Federal Circuit decision,
Electric Power Group. (Ans. 8.) Appellants are improperly conflating part
one of the Alice test with part two of the Alice test, which includes
consideration of an element or combination of elements to determine if the
claim recites "additional features."
Alice Step Two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent-ineligible concept?
Because claim 1 is directed to an abstract idea, the question to be
settled next, according to Alice, is whether this claim recites an element, or
combination of elements, that is enough to establish that the claim is directed
to significantly more than an abstract idea.
Claim 1 is a method claim, which includes "at least one computer
device." With respect to the claimed hardware components, Appellants'
Specification discloses the following:
Additionally, an aspect of the present invention can make use of
software running on a general purpose computer or workstation.
With reference to FIG. 3, such an implementation might employ,
for example, a processor 302, a memory 304, and an input/output
interface formed, for example, by a display 306 and a keyboard
308. The term "processor" as used herein is intended to include
any processing device, such as, for example, one that includes a
CPU ( central processing unit) and/ or other forms of processing
circuitry. Further, the term "processor" may refer to more than
one individual processor. The term "memory" is intended to
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include memory associated with a processor or CPU, such as, for
example, RAM (random access memory), ROM (read only
memory), a fixed memory device (for example, hard drive), a
removable memory device (for example, diskette), a flash
memory and the like. In addition, the phrase "input/output
interface" as used herein, is intended to include, for example, a
mechanism for inputting data to the processing unit (for example,
mouse), and a mechanism for providing results associated with
the processing unit (for example, printer).
(Spec. 10:9-22.)
The general, functional terms by which the computer components are
described indicate that Appellants' Specification discloses a generic general
purpose computer having a processor, a memory, an input/output interface
( e.g., mouse and printer), a display, and a keyboard.
In view of the Examiner's findings, which are consistent with
Appellants' Specification, the claimed hardware components, including "at
least one computer device" reasonably may be determined to be generic,
purely conventional computer elements. Thus, the claims do no more than
require generic computer elements to perform generic computer functions,
rather than improve computer capabilities. Appending a conventional
"computer device" to an abstract idea is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2358 ("[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.").
Appellants argue that "if a set of 'specific limitations' has been
deemed novel and non-obvious over an extensive field of available art, (as is
the case with the instant claims) then the same set of 'specific limitations'
cannot plausibly be simultaneously argued as being 'well understood,
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routine and conventional in the field.'" (App. Br. 1 7.) To support this
argument, Appellants cite to purported Federal Circuit guidance from
Ultramercial, Internet Patents Corp., Amdocs, and Trading Technologies
(Id.; see also Reply Br. 6-7.) However, Appellants improperly conflate the
requirements for eligible subject matter with the independent requirements
of novelty and non-obviousness. "The 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981).
Appellants further argue that "the instant claims clearly 'do not
merely recite the abstract idea [] along with the requirement to perform it on
the Internet, or to perform it on a set of generic computer components,' nor
is it plausible to argue that limitations with such significant specificity ( as
clearly illustrated above) 'preempt all ways of [ carrying out the abstract
idea] on the Internet."' (App. Br. 19 (alterations in original).) However,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). Where claims are deemed to recite only patent ineligible subject
matter under the two-step Alice analysis, as they are here, "preemption
concerns are fully addressed and made moot." Id.
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DECISION
The Examiner's decision rejecting claims 1, 3-5, 7-14, and 16-20 is
affirmed.
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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