International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMay 21, 202014020926 - (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. 14/020,926 09/09/2013 Akihiro Saito JP920120095US1_8134-0072 3541 73109 7590 05/21/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER NG, BILLY H ART UNIT PAPER NUMBER 2441 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AKIHIRO SAITO ___________ Appeal 2019-001978 Application 14/020,926 Technology Center 2400 _________________ Before BRADLEY W. BAUMEISTER, JAMES B. ARPIN, and MICHAEL J. ENGLE, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 21–38, all of the pending claims. Appeal Br. 4.2 Claims 1–20 are cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as IBM Corporation. Appeal Br. 1. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed September 19, 2018) and Reply Brief (“Reply Br.,” filed January 7, 2019); the Final Office Action (“Final Act.,” mailed April 30, 2018) and the Examiner’s Answer (“Ans.,” mailed November 7, 2018); and the Specification (“Spec.,” filed September 9, 2013). Rather than repeat the Examiner’s findings and determinations and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2019-001978 Application 14/020,926 2 STATEMENT OF THE CASE Appellant’s claimed invention relates to methods, systems, and computer program products “supporting combination decisions for virtual resources. The present invention relates more specifically to a device and method supporting combination decisions of virtual resources to be located in a single physical resource.” Spec. ¶ 17. As noted above, claims 21–38 are pending. Claims 21, 27, and 33 are independent. Appeal Br. 31 (claim 21), 32–33 (claim 27), 34–35 (claim 33) (Claims App.). Claims 22–26 depend directly or indirectly from claim 21, claims 28–32 depend directly or indirectly from claim 27, and claims 34–38 depend directly or indirectly from claim 33. Id. at 31–36. Claim 21, reproduced below, is illustrative. 21. A method of relocating virtual resource into a single physical resource, comprising: acquiring, for each of a plurality of candidate virtual resources, change status information indicating a change in a load for each of the respective plurality of candidate virtual resources; performing a first statistical processing on the change status information for the plurality of candidate virtual resources to determine whether a high correlation exists between changes in the loads of the plurality of candidate virtual resources; performing a second statistical processing on the change status information for the plurality of candidate virtual resources to determine whether a high correlation exists between load values above or below a median line in the loads of the plurality of candidate virtual resources; and locating, within the single physical resource and based upon both the first and second statistical processing, the plurality of candidate virtual resources in the single physical resource. Id. at 31. Appeal 2019-001978 Application 14/020,926 3 Claim 27 recites “[a] computer hardware system configured to relocate virtual resource into a single physical resource, comprising: a hardware processor programmed to initiate the following executable operations” performing the steps as recited in claim 21. Id. at 31, 32–33. Claim 33 recites “[a] computer program product for relocating virtual resource into a single physical resource, comprising: a computer readable storage hardware device having program code stored thereon, the program code executable by a hardware processor to perform” the steps as recited in claim 21. Id. at 31, 34–35. The Examiner relies on substantially the same findings and arguments in rejecting claims 21–38 as patent ineligible (Final Act. 2–7, 13–17), and Appellant does not contest the eligibility rejection of any claim separately from independent claim 21 (see Appeal Br. 9–16). For reasons discussed below, we are not persuaded that the Examiner has shown that claim 21 is directed to an abstract idea. In addition, the Examiner relies on substantially the same findings and arguments in rejecting independent claims 21, 27, and 33 as obvious. Final Act. 7–8, 16–28. Except for claim 23, Appellant does not argue the dependent claims separately from their base claims. See Appeal Br. 23–24, 26–28. Claims 21, 27, and 33 recite the same disputed limitations (Appeal Br. 31, 32–33, 34–35 (Claims App.)), and we find at least one of Appellant’s contentions with respect to claim 21 persuasive of dispositive Examiner error (id. at 16–23). Therefore, we focus our analysis of both rejections on independent claim 21. Appeal 2019-001978 Application 14/020,926 4 REFERENCES AND REJECTIONS The Examiner relies upon the following references in rejecting the claims: Name3 Number Publ’d/Issued Filed Yemini US 8,396,807 B1 Mar. 12, 2013 Aug. 12, 2009 Usa US 2004/0143664 A1 July 22, 2004 Oct. 31, 2003 Isci US 2011/0302578 A1 Dec. 8, 2011 June 4, 2010 Sekiguchi US 2012/0096460 A1 Apr. 19, 2012 Sept. 12, 2011 Specifically, the Examiner rejects claims 21–38 under 35 U.S.C. § 101, as directed to patent ineligible subject matter, without significantly more. Final Act. 2–7, 13–17. The Examiner also rejects claims 21–23, 25– 29, 31–35, 37, and 38 as unpatentable under 35 U.S.C. § 103 over the combined teachings of Sekiguchi, Isci, and Yemini (id. at 17–31) and claims 24, 30, and 36 as unpatentable under 35 U.S.C. § 103 over the combined teachings of Sekiguchi, Isci, Yemini, and Usa (id. at 31–33).4 We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For the reasons given below, we reverse the Examiner’s rejections. 3 All reference citations are to the first named inventor only. 4 The Examiner also objects to claims 23, 25, 29, 31, 35, and 37 as allegedly including various informalities. Final Act. 12–13. We do not hear or decide whether the Examiner erred with respect to such objections on appeal. MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters [that] are not properly before the Board.”). Appeal 2019-001978 Application 14/020,926 5 ANALYSIS Patent Eligible Claims 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 U.S. 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 Court’s two-part 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). According to the Court, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Diamond v. Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise Appeal 2019-001978 Application 14/020,926 6 statutory does not become nonstatutory simply because it uses a mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). Having said that, the 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. at 191 (citing Benson and Flook). Nevertheless, the Court noted that “[i]t 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.” Id. at 187; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the individual components were known, “an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea” (emphasis added).). If the claim is “directed to” an abstract idea, we next “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, 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. Appeal 2019-001978 Application 14/020,926 7 B. Office Patent Eligibility Guidance In an effort to achieve clarity and consistency in how the Office applies the Court’s two-part framework, the Office published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).5 In Step One of our analysis, we look to see whether the claims, as written, fall within one of the four statutory categories identified in § 101. Id. at 53 (“Examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the criteria discussed in MPEP6 2106, i.e., whether the claim is to a statutory category (Step 1) and the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”). Under the guidance, we then look to whether the claim recites: (1) 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) Step 2A – Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 5 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Note, the feedback received was primarily directed to examination procedures and, accordingly, this update focuses on clarifying practice for patent examiners. However, all USPTO personnel are expected to follow the guidance.”). 6 All Manual of Patent Examining Procedure (“MPEP”) citations herein are to MPEP, Rev. 08.2017, January 2018. Appeal 2019-001978 Application 14/020,926 8 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 54–55 (“Revised Step 2A”). 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 (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 id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.”). C. Step 2A, Prong One – Claim 21 Recites an Abstract Idea7 Applying the first part of the Alice/Mayo framework (Step 2A), the Examiner finds, the claims recite “an abstract idea of organizing and manipulating information through mathematical correlation.” Final Act. 3, 14. In particular, the Examiner determines: The steps “performing a first statistical processing”, “performing a second statistical processing” and “locating the plurality of candidate virtual resources based upon both the first and second statistical processing” are found analogous to organizing and manipulating information through mathematical correlation. Id. at 15 (italics omitted); Ans. 3; see Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2017) (“The above claim 7 The Examiner and Appellant do not dispute that the claims fall within one of the four statutory categories identified in § 101 under Step 1, so we begin our analysis with Step 2A. Appeal 2019-001978 Application 14/020,926 9 recites a process of taking two data sets and combining them into a single data set, the device profile. The two data sets are generated by taking existing information—i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions—and organizing this information into a new form. The above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device.”); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“The focus of the asserted claims, as illustrated by claim 12 quoted above, is on collecting information, analyzing it, and displaying certain results of the collection and analysis.”). Appellant contends that the Examiner mischaracterizes the claims as attempting to claim an equation. Appeal Br. 14; see Final Act. 4–5. The Examiner acknowledges that an equation is not recited in the claims. However, the Examiner asserts that an equation is not required to perform mathematical correlation. Ans. 7. The Examiner notes that “[t]here is no equation recited in the [Digitech] claim, and the court identifies such processes are mathematical algorithms.” Id.; see Digitech, 758 F.3d at 1351 (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”). Nevertheless, as the Office explains, When determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), examiners should consider whether the claim recites a mathematical concept or merely includes limitations that are based on or involve a mathematical concept. A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the Appeal 2019-001978 Application 14/020,926 10 mathematical concept grouping), if it is only based on or involves a mathematical concept. For example, a limitation that is merely based on or involves a mathematical concept described in the specification may not be sufficient to fall into this grouping, provided the mathematical concept itself is not recited in the claim. October 2019 Update: Subject Matter Eligibility at 3 (footnotes omitted); see Digitech, 758 F.3d at 1350 (“In determining whether a process claim recites an abstract idea, we must examine the claim as a whole, keeping in mind that an invention is not ineligible just because it relies upon a law of nature or mathematical algorithm.”). To be sure, Appellant’s Specification discloses that Equation 1 may be used in the first statistical processing. Spec. ¶¶ 39–42. However, we are required to ensure that the examiners follow the 2019 Revised Patent Subject Matter Eligibility Guidance, as clarified by the October 2019 Update: Subject Matter Eligibility. Under this Office Guidance, the fact that the Specification may provide evidence that the claimed statistical analysis is performed by using mathematical concepts is not sufficient to show that the claim recites a mathematical concept because the equation, itself, is not recited in the claims. Consequently, we are not persuaded that the claims recite a mathematical concept consistent with the October 2019 Update: Subject Matter Eligibility. This determination does not end our inquiry. We next inquire whether claim 21 recites a mental process. The Office’s Guidance explains: [b]y way of example, examiners may review the specification to determine if the underlying claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process. Appeal 2019-001978 Application 14/020,926 11 October 2019 Update: Subject Matter Eligibility at 8 (emphasis added). The method of claim 21 broadly describes the steps of (1) acquiring information indicating a change (“acquiring, for each of a plurality of candidate virtual resources, change status information indicating a change in a load for each of the respective plurality of candidate virtual resources”), (2) performing a first statistical processing on the information to determine whether a high correlation exists between changes (“performing a first statistical processing on the change status information for the plurality of candidate virtual resources to determine whether a high correlation exists between changes in the loads of the plurality of candidate virtual resources”), and (3) performing a second statistical processing on the information to determine whether a high correlation exists between values above or below a median line (“performing a second statistical processing on the change status information for the plurality of candidate virtual resources to determine whether a high correlation exists between load values above or below a median line in the loads of the plurality of candidate virtual resources”).8 As identified above, limitation (1) constitutes an 8 The “locating” step broadly encompasses at least identifying virtual resources “to be located” in a physical resource, allocating virtual resources to a physical resource, and “determining a suitability of locating the plurality of virtual resources in a single physical resource.” See, e.g., Spec. ¶¶ 3, 5–7, 8, 14, 17, 20, 21, 23, Figs. 1, 7. Thus, although this step may to some extent manipulate the results of limitations (1)–(3), as discussed below, we analyze this step as reciting an additional element in the context of our Step 2A, Prong Two, analysis. See SiRF Tech., Inc. v. ITC, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more Appeal 2019-001978 Application 14/020,926 12 observation that can be performed in the human mind or with the aid of a pen or pencil and paper. Limitations (2) and (3) constitute evaluations or judgments that can be performed in the human mind or with the aid of pencil and paper. Thus, claim 21 recites method steps that “can practically be performed in the human mind.” October 2019 Update: Subject Matter Eligibility at 9 (“A claim that encompasses a human performing the step(s) mentally with the aid of a pen and paper recites a mental process” (emphasis omitted)). Therefore, we are persuaded that claim 21 recites a patent- ineligible abstract idea. D. Step 2A, Prong Two – Claim 21 Integrates the Abstract Idea Into a Practical Application Having determined that claim 21 recites abstract ideas, we now consider whether claim 21 recites additional elements that integrate the abstract idea into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 53–55. As explained in the [2019 Revised Patent Subject Matter Eligibility Guidance], the evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole “integrates [the] judicial exception into a practical application [that] 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 designed to monopolize the judicial exception.” These considerations are set forth in the [2019 Revised Patent Subject Matter Eligibility Guidance], quickly, i.e., through the utilization of a computer for performing calculations.”). Appeal 2019-001978 Application 14/020,926 13 MPEP § 2106.05(a) through (c), and MPEP § 2106.05(e) through (h). October 2019 Update: Subject Matter Eligibility at 11 (footnotes omitted). Appellant contends that claim 21 is not directed to an abstract idea because it “is directed to a specific improvement to a conventional computer technology (i.e., the provision[ing] of virtual resources to physical resources). While the claimed invention uses statistical processing, statistical processing (i.e., ‘organizing information through mathematical correlation’) is not what the claimed invention is directed to.” Appeal Br. 14. Appellant explains: As discussed in the background portion of Appellants’ specification: In cloud computing, there is an idea known as provisioning. In provisioning, virtual IT resources (referred to below as virtual resources) are dynamically allocated to physical IT resources (referred to below as physical resources) based on user requests. Provisioning has already been widely adopted because IT systems can be quickly and flexibly constructed even in business situations with large load fluctuations. However, in provisioning, there is the issue of determining which virtual resources are to be located in which physical resource. More specifically, there is the issue of determining which virtual servers are to be located in which physical server. Several methods have been proposed for optimizing placement. One technique involves a load correlation determined for each virtual machine; the relative maximum load capacity of each virtual machine is predicted from the correlation; combinations are established for each virtual machine so that the total of each virtual machine server at the predicted maximum load capacity for each virtual machine does not exceed the allowable load capacity of the virtual machine servers; and each virtual machine is allocated in Appeal 2019-001978 Application 14/020,926 14 accordance with the calculated combinations. (emphasis added)[.] Notably, this passage notes how different technologies have been used to optimize the placement (i.e., provisioning) of virtual resources into physical resources, which is a well-known computer technology. The claimed invention improves upon this conventional technology by providing a particular solution for provisioning combinations of virtual resources (i.e., multiple virtual resources) into a single physical resource. Id. at 9 (quoting Spec. ¶¶ 2–3 (Appellant’s underlining)). The Examiner finds that the limitations of claim 21 are a combination of known techniques as evidenced by Appellant’s reliance on the Background of the Specification.9 Ans. 4–5; see Reply Br. 2; see also BASCOM, 827 F.3d at 1348 (“[In Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)], we found claim language reciting the invention’s specific improvements to help our determination in step one of the Alice framework that the invention was directed to those specific improvements in computer technology. But we also recognized that, ‘in other cases involving computer-related claims, there may be close calls about how to characterize what the claims are directed to.’ ‘In such cases,’ we noted, ‘an analysis of whether there are arguably concrete improvements in the recited computer technology could take place under step two.’”). However, a combination of know techniques can integrate an abstract idea into a practical application. 9 We acknowledge that some of the considerations at Step 2A, Prong Two, properly may be evaluated under the second part of the Alice/Mayo framework (Step 2B of the Office guidance). See Final Act. 7–8. For purposes of maintaining consistent treatment within the Office, we evaluate those considerations under the first part of the Alice/Mayo framework (Step 2A of the Office guidance). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32. Appeal 2019-001978 Application 14/020,926 15 See BASCOM, 827 F.3d at 1352. We are persuaded that Appellant’s claim achieves an improvement in computer technology.10 As noted above, claim 21 recites “[a] method of relocating virtual resource into a single physical resource.” Appeal Br. 31 (Claims App.) (emphasis added). In addition to the three above-noted limitations of acquiring information and performing two distinct statistical processings on the information, together reciting the abstract idea; claim 21 then recites “locating, within the single physical resource and based upon both the first and second statistical processing, the plurality of candidate virtual resources in the single physical resource.” Id. The act of locating the virtual resources in the physical resource transforms the physical resource into a new resource that further includes particularly located virtual resources. Thus, we conclude claim 21 recites meaningful limitations for locating the candidate virtual resources in a single physical resource using both of two different statistical processings of the same acquired change status information. See Diehr, 450 U.S. at 187 (“Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.”); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1066 (Fed. Cir. 2011) (“The claims of the ’139 and ’739 patents are directed 10 While we do not conflate the determinations of eligibility and obviousness, we note that the Examiner combines the teachings of Isci and Yemini to teach or suggest the “locating” step. Final Act. 21–22. The Examiner expressly finds that a person of ordinary skill in the relevant art would make this combination “because the combination can provide an improvement to the computer system.” Ans. 11–12. Appeal 2019-001978 Application 14/020,926 16 to a method of lowering the risk of chronic immune-mediated disorder, including the physical step of immunization on the determined schedule. These claims are directed to a specific, tangible application, as in [Research Corporation Technologies, Inc. v. Microsoft Corporation, 627 F.3d 859 (Fed. Cir. 2010)], and in accordance with the guidance of Bilski v. Kappos that ‘[r]ather than adopting categorical rules that might have wide-ranging and unforeseen impacts,’ exclusions from patent-eligibility should be applied ‘narrowly,’ we conclude that the subject matter of these two patents traverses the coarse eligibility filter of § 101.” (citations omitted)); see also MPEP § 2106.05(e) (“The phrase ‘meaningful limitations’ has been used by the courts even before Alice and Mayo in various contexts to describe additional elements that provide an inventive concept to the claim as a whole.”). As noted above, independent claims 27 and 33 include corresponding recitations. Id. at 32–33 (claim 27), 33–34 (claim 33). Considered as a whole, we are persuaded that claim 21 integrates the abstract idea into a practical application, and, thus, claim 21 is not directed to an abstract idea. Because claims 27 and 33 recite corresponding limitations to those of claim 21, we are persuaded that those claims, as well as the dependent claims, also are not directed to an abstract idea. For this reason, we need not reach Step 2B of the Alice/Mayo framework, and we do not sustain the patent ineligibility rejection. Non-Obviousness A. Non-Obviousness of Claim 21 Over Sekiguchi, Isci, and Yemini As noted above, the Examiner rejects independent claim 21 as obvious over the combined teachings of Sekiguchi, Isci, and Yemini. Final Act. 7–12, 18–22. In particular, claim 21’s third limitation recites the step of Appeal 2019-001978 Application 14/020,926 17 “performing a second statistical processing on the change status information for the plurality of candidate virtual resources to determine whether a high correlation exists between load values above or below a median line in the loads of the plurality of candidate virtual resources.” Appeal Br. 31 (Claims App.) (emphasis added). The Examiner finds that this limitation is missing from the combined teachings of Sekiguchi and Isci, but finds that Yemini teaches this limitation. Final Act. 20–21. The Examiner finds that Yemini teaches or suggests: The server element manager monitors bursty storage I/O usage [change status information] by one or more virtual machines, including average I/O flows and correlation of the peak I/O flows [load values]. For example, four virtual machines shares a common server and have average I/O flows of 250Mbps, 250Mbps, 200Mbs and 300Mbps (1 Gbps total). If the peak I/O flows, where the I/O usage is above the average [median line], are highly correlated, the peaks can generate 5 Gbps [Yemini, column 18, line 37–40; column 19, line 50 - column 20, line 10]. Final Act. 21 (emphasis added; bracketing in original). The Examiner also finds that “Yemini teaches an example of four virtual machines sharing a common server with bursty I/O flows with a peak/average ratio of five for each virtual machine. In average [median line], the aggregate demand average of 1 Gbps consumes only 25% of the HBA capacity.” Id. at 7–8 (italics added; underlining and bracketing in original). In particular, as the Examiner notes, Yemini discloses: The aggregate demand average of 1 Gbps consumes only 25% of the HBA capacity. A resource scheduler may limit its consideration to only the average demand which, in this case, would be manageable by the HBA and SAN. However, consider an alternate scenario where the I/O traffic streams are bursty, with a peak/average ratio of five for each virtual machine. If the four I/O streams associated with the virtual machines are Appeal 2019-001978 Application 14/020,926 18 uncorrelated, their peaks will be likely dispersed and the peak of the aggregate stream will generally be less than 2 Gbps, which can be handled by the HBA and SAN with negligible or relatively few queuing delays. Yemini, 19:56–67 (emphases added); see Final Act. 21. Thus, the Examiner relies on Yemini’s teachings that refer to average, not median, values and the relation of capacity or peak, e.g., a “bursty” value, to an average. See Appeal Br. 18 (supplying an undated definition of “bursty”). Initially, the Examiner finds that Yemini’s teaching of an “average” teaches or suggests the recited “median line.” Final Act. 7–8, 21; Ans. 11. Appellant disagrees. Appeal Br. 17–18; Reply Br. 3. In science generally, and, particularly in mathematics and in statistics, an “average” and a “median” are not the same concept and are determined differently. The plain and ordinary meaning of median is the middle value in a number of ordered values, whereas an average or mean is the sum of a number of values divided by that number. Thus, we interpret the recited “median line” to be a determined value or level at the median of the number of values, to which those values then may be compared. In the claimed method, the load values are determined to be above (i.e., greater than) or below (i.e., less than) the value or level of the median line. As the Specification explains, “a median is calculated every hour as an example of a typical value for the load value of each operation, and the load value of each operation is assigned a sign depending on whether the load value of each operation is greater than or less than the median.” Spec. ¶ 42. Appellant’s Specification also includes the following disclosure: FIG. 5 shows the sign information stored in the sign information storage unit 32. This sign information is load value signs. Each day, a sign is assigned to the load change of each of Appeal 2019-001978 Application 14/020,926 19 operations A–E depending on whether the load value of each operation is above or below a median line. More specifically, if a load value is above the median line, (+) is assigned. If a load value is below the median line, (-) is assigned. When the load value is equal to the median, (+) is assigned for convenience. Id. ¶ 53), see also Fig. 5. Thus, the Specification is clearly directed to evaluating individual load values with respect to a median value, not to averages. Consequently, we are not persuaded that Yemini’s averages teach the recited “median line.” Regardless, even assuming arguendo that Yemini’s disclosed average rendered obvious a median line, as noted above; the Examiner’s rejection remains problematic. The Examiner relies on Yemini’s determination of the peak/average ratio to teach or suggest the disputed limitations of claim 21. See Final Act. 22 (citing Yemini, 20:12–15); Ans. 12 (citing Yemini, 20:12– 15). In particular, Yemini further discloses that either the aggregate demand average is compared to a resource’s load capacity (Yemini, 19:56–60) or a ratio of the peak load to the average load is calculated and the ratios of various resources may be compared to determine whether they are correlated or uncorrelated (id. at 19:60–20:3; see id. at 12:60–63). Specifically, Yemini discloses, “the allocation of virtual machines to common servers according to scheduling process 700 may result in substantially de-correlated peaks and substantially reduce the peak/average ratio seen by servers.” Yemini, 20:12–15 (emphasis added). In contrast, claim 21 recites, “performing a second statistical processing on the change status information for the plurality of candidate virtual resources to determine whether a high correlation exists between load values above or below a median line in the loads of the plurality of candidate virtual resources.” Appeal Br. 31 (Claims App.) (emphasis Appeal 2019-001978 Application 14/020,926 20 added). Appellant contends, “while the Examiner’s cited passage refers to average demand, this is not related to determining whether the high correlation exists. In Yemini, the correlation being contemplated is between peaks and not load values relative to a median line, as claimed.” Id. at 18. We agree, and we are persuaded that at least this challenge to the Examiner’s obviousness rejection of claim 21 identifies dispositive Examiner error.11 Therefore, we are persuaded that the Examiner erred in rejecting claim 21 as obvious over the combined teachings of Sekiguchi, Isci, and Yemini. Consequently, we do not sustain the obviousness rejection of claim 21. B. Non-Obviousness of Claims 22–38 Over the Applied References As noted above, independent claims 27 and 33 recite limitations corresponding to the disputed limitations of claim 21. Consequently, we are persuaded that the Examiner erred in rejecting claims 27 and 33 for the same reasons as claim 21, and we do not sustain the rejection of those claims. As noted above, except for claim 23, Appellant does not argue the dependent claims separately from their base claims. See Appeal Br. 23–24, 26–28. We, likewise, do we do not sustain the obviousness rejection of 11 Appellant raises various other contentions challenging the Examiner’s obviousness rejection of claim 21, as well as of claim 23. In particular, Appellant contends that the Examiner fails to show that together the references teach or suggest acquiring change status information and performing first and second statistical processing on the same acquired change status information. Appeal Br. 20; Reply Br. 5. Because we find dispositive error based on the contention discussed above, we do not reach Appellant’s other contentions. Appeal 2019-001978 Application 14/020,926 21 claims 22, 23, 25, 26, 28, 29, 31, 32, 34, 35, 37, and 38, each of which depends directly or indirectly from independent claim 21, 27, or 33. With respect to the remaining rejection of dependent claims 24, 30, and 36, the Examiner does not rely on the additionally cited reference, Usa, to cure the deficiencies noted above. See Final Act. 31–33. For the above reasons, we do not sustain the rejection of those claims. DECISION 1. The Examiner erred in rejecting claims 21–38 under 35 U.S.C. § 101, as directed to patent-ineligible subject matter. 2. The Examiner erred in rejecting claims 21–23, 25–29, 31–35, 37, and 38 under 35 U.S.C. § 103 as rendered obvious over the combined teachings of Sekiguchi, Isci, and Yemini. 3. The Examiner erred in rejecting claims 24, 30, and 36 under 35 U.S.C. § 103 as rendered obvious over the combined teachings of Sekiguchi, Isci, Yemini, and Usa. 4. Thus, on this record, claims 21–38 are not unpatentable. CONCLUSION We reverse the Examiner’s rejections of claims 21–38. Appeal 2019-001978 Application 14/020,926 22 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–38 101 Eligibility 21–38 21–23, 25– 29, 31–35, 37, 38 103 Sekiguchi, Isci, Yemini 21–23, 25– 29, 31–35, 37, 38 24, 30, 36 103 Sekiguchi, Isci, Yemini, Usa 24, 30, 36 Overall Outcome 21–38 REVERSED Copy with citationCopy as parenthetical citation