Ex Parte Chen et al

Patent Trial and Appeal Board

Jun 19, 2018

11741385 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/741,385 04/27/2007
48813 7590 06/21/2018
LAW OFFICE OF IDO TUCHMAN (YOR)
PO Box 765
Cardiff, CA 92007
FIRST NAMED INVENTOR
Shyh-Kwei Chen
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.
CH920050046US 1 2886
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
pair@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHYH-KWEI CHEN, JOACHIM H. FRANK, JANA KOEHLER,
HUI LEI, and MICHAEL SEBASTIAN WAHLER
Appeal2017-000903
Application 11/741,385
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1 and 25--46 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2017-000903
Application 11/741,385
THE INVENTION
The Appellants' claimed invention is directed to a method and
apparatus for observation model validation (Spec., para. 2). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for validating an observation model, the method
compnsmg:
receiving the observation model at a validation engine;
identifying a constraint applicable to the observation
model;
classifying the applicable constraint by at least one
computer processor, wherein the step of classifying the
applicable constraint determines that the applicable constraint is
a global uniqueness constraint or a global cyclic dependency
constraint; and
validating the observation model dependent on the
constraint category of the applicable constraint, wherein the step
of validating the observation model comprises executing a
classification-based validation algorithm; and
outputting the validated observation model from the
validation engine to a monitoring engine;
wherein the step of receiving the observation model
comprises (a) reading at least one model element from the
observation model to the validation engine, and the step of
identifying comprises (b) identifying a constraint applicable to
the at least one model element, and the step of validating
comprises ( c) validating the at least one model element
dependent on the constraint category of the constraint
applicable to the at least one model element; and
further comprising the step of checking for further model
elements to read from the observation model to the validation
engine and, if at least one further element is present, performing
steps (a), (b) and (c).
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Appeal2017-000903
Application 11/741,385
THE REJECTION
The following rejection is before us for review:
Claims 1 and 25--46 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim 1 is not directed to an abstract idea (App. Br. 6-9, Reply Br. 6-
10). The Appellants also argue the claim is "significantly more" than the
alleged abstract idea (App. Br. 9-11, Reply Br. 11, 12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2-6, Ans. 2-11 ).
We agree with the Examiner. 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: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2017-000903
Application 11/741,385
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id at 2358.
Here, we determine that the claim is directed to the concept of
validating an observation model subject to a constraint. This is a
fundamental economic practice long prevalent in our system of commerce to
validate business models or an idea of itself, and is an abstract idea beyond
the scope of§ 101. Here, the preamble of the claim is directed to a "method
for validating an observation model." The Specification at para. 2 states that
the invention relates to "a method ... for observation model validation".
The Specification at para. 8 states an "'observation model' describes the
monitoring of the business process model in a graphical way" and is related
to the concept of business metrics. See Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information,
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Appeal2017-000903
Application 11/741,385
analyzing it, and displaying results from certain results of the collection and
analysis was held to be an abstract idea.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. For example, the Specification at para. 83 states "[a]ny suitable
computer usable or computer readable medium may be utilized." The
Specification at para. 83 describes using conventional computer components
such as a hard disk, RAM, optical fiber, the Internet, and magnetic storage
devices.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (App. Br. 12, 13). While pre-
emption "'might tend to impede innovation more than it would tend to
promote it,' thereby thwarting the primary object of the patent laws" (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption
does not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)("[T]hat the claims do not preempt
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Appeal2017-000903
Application 11/741,385
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
For these above reasons the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims
which are directed to similar subject matter and the rejection of these claims
is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1 and 25--46 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1 and 25--46 is sustained.
AFFIRMED
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