Ex Parte Boss et al

Patent Trial and Appeal Board

Nov 14, 2018

12208510 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/208,510 09/11/2008
79980 7590 11/16/2018
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
FIRST NAMED INVENTOR
Gregory J. Boss
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.
END920070427US 1 2718
EXAMINER
WEISENFELD, ARYANE
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
drubbone@kdiplaw.com
Docket@Kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. BOSS, JAMES R. DORAN,
RICK A. HAMILTON II, and ANNE R. SAND
Appeal2017-005502 1
Application 12/208,5102
Technology Center 3600
Before NINA L. MEDLOCK, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
November 8, 2016) and Reply Brief ("Reply Br.," filed February 15, 2017),
and the Examiner's Answer ("Ans.," mailed December 15, 2016) and Final
Office Action ("Final Act.," mailed May 19, 2016).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2017-005502
Application 12/208,510
CLAIMED INVENTION
Appellants' claimed invention relates to "an approach for managing
the consumption of energy" (Spec. ,r 2).
Claims 1, 7, 13, and 19 are the independent claims on appeal.
Claim 1, reproduced below with bracketed notations added, is illustrative of
the claimed subject matter:
1. A method for policy-based energy management, the
method employing at least one computing device programmed to
perform the following steps:
[(a)] automatically discovering, by at least one computer
device, each of a plurality of entities and devices in an energy
system;
[(b)] enrolling, by the at least one computer device, the
discovered entities and devices hierarchically in a hierarchy in an
energy management system;
[ ( c)] forming, by the at least one computer device, a
hierarchical tree of the hierarchy that reflects connections of the
each of the plurality of entities within the energy system;
[ ( d)] associating, by the at least one computer device, a
set of energy management policies with at least a subset of the
entities and devices of the hierarchy in the hierarchical tree;
[ ( e)] initiating an energy conservation request; and
[(f)] traversing, by the at least one computer device, the
hierarchy in the hierarchical tree and selecting an optimal energy
throttling plan based on the set of policies to satisfy the energy
conservation request by first dictating an energy reduction policy
that defines an overall energy reduction percentage at a top layer,
wherein the top layer determines energy reduction in a set of
entities in a layer immediately below the top layer by allocating
a non-zero percentage of available energy that is based on the
overall energy reduction percentage to a first entity and a
different non-zero percentage of available energy that is based
on the overall energy reduction percentage to a second entity,
each of the set of entities corresponding to a branch of a set of
branches in the hierarchy, and then continuing down a series of
layers of each of the set of branches of the hierarchy by allocating
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a percentage of available energy that is based on an energy
reduction percentage of a parent entity until end devices at a
bottom of the hierarchy have all received energy throttling
instructions, and wherein each entity or device at each of the
series of layers of each of the set of branches is delegated by a
parent entity or device to dictate energy reduction to the entity or
device at a next layer below in the series of layers, wherein an
energy management policy for a first device of a particular type
that is associated hierarchically with one entity is different from
an energy management policy of a second device of the particular
type that is associated hierarchically with a different entity.
REJECTI0NS 3
Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. 4
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-20 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Brickfield et al. (US 2007/0255461 Al, pub. Nov. 1, 2007)
("Brickfield,"), Horst (US 2008/0252141 Al, pub. Oct. 16, 2008) ("Horst"),
and "Rolling Brownouts," available at https://web.archive.org/web/
20080702053353/http://www.computerhope.com/jargon/r/rollbrow.htm,
Wayback Machine (July 2, 2008) ("Brownout").
3 The rejection of claims 1, 7, 13, and 19 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. Ans. 3.
4 Although the Examiner references independent claims 1 and 39 only, we
understand that the rejection also is applicable to dependent claims 2, 3, 7-
13, 16-27, 40-51, and 54--59.
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ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact, and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
Here, in rejecting claims 1-20 under§ 112, first paragraph, the
Examiner asserts that the Specification, as originally filed, "fails to disclose
with enough specificity the step of automatically discovering each of a
plurality of entities and devices in an energy system," as recited in
independent claim 1, and similarly recited in independent claims 7, 13, and
19 (Final Act. 7). The Examiner acknowledges that the Specification
discloses that each device or entity is enrolled into the system and that this
enrollment may occur "through auto-discovery by policy manager 50," and
that the Specification also discloses exemplary devices (id.) ( citing Spec.
,r,r 38, 39). But, the Examiner maintains that the Specification makes no
effort to define either how the system automatically discovers the plurality
of entities and devices or what the devices are; therefore, according to the
Examiner, "it is not clear how the system can automatically discover such a
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broad set of entities and devices including all known and unknown power
management systems" (id.).
The difficulty with the rejection is that the Examiner seemingly
confuses the enablement provision of 35 U.S.C. § 112, first paragraph, with
the written description requirement, which, as the Examiner acknowledges
(Final Act. 7-8), is a separate requirement. To satisfy the written description
requirement, Appellants need only demonstrate original descriptive support
in the Specification for the subject matter recited in the claims. The
Specification, by the Examiner's own admission, describes that the plurality
of devices and entities can be automatically discovered "by policy
manager 50" (id. at 7). Therefore, we do not sustain the Examiner's
rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
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issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "managing the
consumption of energy," which the Examiner determined is an idea similar
to "comparing new and stored information to each other and using rules to
identify options," which the court in SmartGene, Inc. v. Advanced Biological
Labs, S.A., 555 F. App'x 950 (Fed. Cir. 2014) determined is a patent-
ineligible abstract idea (Final Act. 3--4). The Examiner also determined that
the claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception (id. at 4--5).
The Specification describes that, as energy prices rise, companies and
individuals are seeking ways to reduce consumption and manage shortage
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situations (Spec. ,r 3). According to the Specification, current methods for
managing power shortage situations are limited; thus, although a few early
solutions allow application servers to be tuned down to lower power
consumption modes, and although devices may be connected to home
appliances that allow the power company to tum off power to the appliance
when a shortage occurs, this only enables an on/off situation for selected
devices (id.). The Specification describes that options for managing
individual objects of a system are limited as most products do not provide
intelligent options, and that centralized management of heterogeneous
devices during a power shortage does not exist (id. ,r 4 ).
The claimed invention is intended to address this issue by providing a
policy-based decision system to manage energy consumption within a
complex system, e.g., a municipality, business, or home, for the purpose of
conservation or to contend with a shortage situation (id. ,r 5). The
Specification, thus, describes that, in accordance with the claimed invention,
a hierarchy of entities and/or devices are enrolled in an energy management
system, a set of energy management policies are associated with the
entities/devices, and, in response to an energy reduction request (e.g., a
potential brownout), energy is allocated to the entities and devices in a top-
down manner using a hierarchical data structure and the management
policies (see, e.g., id. ,r,r 5-11, 25).
Putting aside whether the Examiner erred in finding that the claims
are directed to an abstract idea, we are persuaded that even if the claims are
directed to an abstract idea, the Examiner has not adequately explained why
the claims fail to recite limitations that are "significantly more" than the
abstract idea itself. For example, the Examiner does not explain why, in
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view of the express claim language read in light of the above-referenced
portions of the Specification, the claimed invention would not be considered
an improvement in the functionality of computerized energy systems.
Instead, the Examiner ostensibly concludes that the claimed invention does
not lie with the improvement of a technology because the claimed invention
is directed to the abstract idea of managing the consumption of energy and
merely utilizes generic computing devices to compare information using
rules, i.e., a set of policies (Ans. 10-12). We are persuaded that such
reasoning is inadequate to sustain the rejection, when the above-referenced
portions of the record are considered as a whole.
The Examiner has not sufficiently established that the claims are
directed to patent-ineligible subject matter. Therefore, we do not sustain the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.
Obviousness
Independent Claim 1 and Dependent Claims 2-6
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) at least because none
of the cited references discloses or suggests "forming ... a hierarchical tree
of the hierarchy that reflects connections of the each [sic] of the plurality of
entities within the energy system," and
traversing ... the hierarchy in the hierarchical tree and selecting
an optimal energy throttling plan ... by first dictating an energy
reduction policy that defines an overall energy reduction
percentage at a top layer, wherein the top layer determines
energy reduction in a set of entities in a layer immediately below
the top layer by allocating a non-zero percentage of available
energy that is based on the overall energy reduction percentage
to a first entity and a different non-zero percentage of available
energy that is based on the overall energy reduction percentage
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to a second entity ... and wherein each entity or device at each
of the series of layers of each of the set of branches is delegated
by a parent entity or device to dictate energy reduction to the
entity or device at a next layer below in the series of layers,
i.e., limitations (c) and (f), as recited in claim 1 (App. Br. 16-18).
The Examiner ostensibly acknowledges that Brickfield does not
disclose the argued limitations (Final Act. 13-14 ). And the Examiner cites
Horst to cure the deficiency of Brickfield (id. at 15-16) (citing Horst ,r 26).
But the best that Horst discloses is that a class-specific energy curtailment
signal can be transmitted by an energy controller to a predetermined class of
energy-consuming devices based on a priority of the classes. Horst, thus,
discloses, for example, that the energy controller, upon detecting an over-
energy-consumption condition, can transmit the class-specific energy
curtailment signal for the lowest priority device class; then, if the over-
consumption condition remains, the energy controller can transmit the class-
specific energy curtailment signal for the next lowest priority class, and so
on (Horst ,r 26). Horst clearly establishes a priority among the plurality of
energy-consuming devices. But, we agree with Appellants that Horst does
not disclose or suggest forming a hierarchy of devices, including a series of
parent-child relationships, which dictate how the available energy is
allocated, as called for in claim 1.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 2-6. Cf In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the
independent claims from which they depend are nonobvious").
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Independent Claims 7, 13, and 19 and Dependent Claims 8-12, 14-18, and
20
Independent claims 7, 13, and 19 include language substantially
similar to the language of claim 1, and stand rejected based on the same
rationale applied with respect to claim 1 (see Final Act. 26-28, 37-38, 48-
49). Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 7, 13, and 19, and claims 8-12, 14--18, and
19, which depend therefrom, for the same reasons set forth above with
respect to claim 1.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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