Ex Parte Lipstone et al

Patent Trial and Appeal Board

Mar 28, 2019

14088542 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/088,542 11/25/2013 Laurence R. Lipstone
21398 7590 04/01/2019
Level 3 Communications, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
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.
0447-US-U42 1079
EXAMINER
MAI,KEVINS
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENCE R. LIPSTONE, WILLIAM CROWDER,
ANDREW SWART, CHRISTOPHER NEWTON, and
LEWIS ROBERT VARNEY
Appeal2018-000162
Application 14/088,542 1
Technology Center 2400
Before CARL W. WHITEHEAD JR., IRVINE. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-35, which are all of the claims pending in the Application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Level 3
Communications, LLC. Br. 2.
Appeal2018-000162
Application 14/088,542
Technology
The application relates to performing warm-up strategies in a cache
content delivery service. See, e.g., Spec. ,r 1148.
Illustrative Claim
Claim 17 is illustrative and reproduced below:
17. A computer-implemented method, operable in a content
delivery (CD) network comprising multiple CD services
including one or more cache CD services, said CD services
running on a plurality of devices, the method operable on at
least one device comprising hardware including memory and at
least one processor, the method comprising:
in response to a cache CD service of said one or more
cache CD services being started, performing one or more warm
up strategies selected from a group comprising:
(i) obtaining a global configuration object;
(ii) obtaining at least some customer data; and
(iii) pre-fetching content,
wherein said cache CD service begins accepting requests
after at least some of said one or more warm up strategies have
completed.
Rejections2
Claims 1-35 stand rejected under 35 U .S .C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 3.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief mailed March
27, 2017 ("Br."), as well as the following documents for their respective
details: the Final Rejection mailed August 25, 2016 ("Final Act.") and the
Examiner's Answer mailed July 28, 2017 ("Ans.").
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Application 14/088,542
Claims 1-16, 32, and 34 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Greene et al. (US 2002/0165727 Al; pub. Nov. 7,
2002) ("Greene"), Lobo et al. (US 2014/0019577 Al; pub. Jan. 16, 2014)
("Lobo"), and Constant et al. (US 6,226,694 B 1; May 1, 2001) ("Constant").
Final Act. 4--17.
Claims 17-19, 21, 22, 25-27, 29-31, 33, and 35 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Greene and Lobo. Final Act. 17-
26.
Claims 23 and 24 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Greene, Lobo, and Chen et al. (US 2006/0047751 Al;
pub. Mar. 2, 2006) ("Chen"). Final Act. 26-28.
Claims 20 are 28 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Greene, Lobo, and Devanneaux et al.
(US 2007/0156845 Al; pub. July 5, 2007) ("Devanneaux"). Final Act. 28-
29.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). We have considered in this Decision only those arguments
Appellants actually raised in the Brief. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We adopt the Examiner's findings
and conclusions as our own, to the extent consistent with our analysis herein.
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Application 14/088,542
The 35 USC§ 101 Rejection
A. Section 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.
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. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (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
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Application 14/088,542
rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); 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. (citation omitted) (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 tum 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 (quotation marks 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,
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Application 14/088,542
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) ("Memorandum"). Under that guidance, we first look to
whether the claim recites:
( 1) (see Memorandum Step 2A - Prong One) any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human activity such as a
fundamental economic practice, or mental processes); and
(2) (see Memorandum Step 2A - Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-(c), (e}-(h)). 3
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
3 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See Memorandum.
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum Step 2B.
C. Examiner's § 101 Rejection - Alice/Mayo - Step 1
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 17 recites the abstract idea of "a cache that receives a piece of
information." Ans. 2.
Claim 17 recites various warm up strategies to be performed by a
cache content delivery (CD) service in a CD network it begins accepting
requests. The limitations of claim 17 include (1) in response to a cache CD
service of said one or more cache CD services being started, performing one
or more warm up strategies selected from a group comprising: (i) obtaining a
global configuration object; (ii) obtaining at least some customer data; and
(iii) pre-fetching content; and (2) wherein said cache CD service begins
accepting requests after at least some of said one or more warm up strategies
have completed. These limitations, under their broadest reasonable
limitation, recite neither mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or a
mental process. See Memorandum Step 2A - Prong One. Thus, we
determine that the claims are not directed to an abstract idea. We also
determine that the claims are not directed to any other judicial exception.
For the foregoing reason, we do not sustain the Examiner's subject
matter eligibility rejection of claim 17, and we do not sustain the rejection of
claims 1-16 and 18-3 5 for the same reason.
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Application 14/088,542
The 35 US.C. § 103 Rejections
Claim 1 7 recites, in relevant part, "said cache CD service begins
accepting requests after at least some of said one or more warm up strategies
have completed." Appellants argue "Lobo does not teach or suggest the
claimed 'wherein said cache CD service begins accepting requests after at
least some of said one or more warm up strategies have completed,"' and
"the Examiner provides no indication of this feature in Lobo." Br. 17.
Appellants contend that "[ e ]ven if Lobo teaches 'warming up' a cache by
pre-fetching content, Lobo makes no mention of the cache not accepting
requests until it has been warmed up." Id.
Appellants' arguments are unpersuasive. The Examiner finds, and we
agree, that Lobo discloses the argued limitation because Lobo discloses
"warming up" a cache as "a new edge caching server" being installed and
"query[ing] its peer caching servers for their HTTP logs to prepopulate
(through pre-fetching) the empty cache of the new edge caching server."
Ans. 4 (emphasis omitted); Lobo ,r 27. Lobo also discloses that "[c]aching
servers may also 'pre-fetch' resources by requesting and receiving content
before the content is requested by a client computer." Lobo ,r 22. In view of
this express disclosure, we find unconvincing Appellants' contention that
"Lobo makes no mention of the cache not accepting requests until it has
been warmed up." Br. 17.
Appellants argue the rejections of claims 1-16, 18, 20-24, 28-32, and
34 under separate headings. Id. at 17-27. We find Appellants' arguments
unpersuasive for the reasons stated by the Examiner. Ans. 4--10; see also
Final Act. 4--19.
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Application 14/088,542
Accordingly, in view of the foregoing, we sustain the rejections of
claims 1-3 5.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-3 5 under § 101, but we affirm the Examiner's decision rejecting
these claims are unpatentable under § 103.
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.
§ 41.50(±).
AFFIRMED
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