JORGENSON, LOKI et al.

Patent Trials and Appeals Board

Nov 22, 2019

14248094 - (D) (P.T.A.B. Nov. 22, 2019)

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.
14/248,094 04/08/2014 LOKI JORGENSON T8476513US1 8079
142109 7590 11/22/2019
CONNEELY PC
121 WILLOWDALE AVENUE
SUITE 207
TORONTO, ONTARIO M2N 6A3
CANADA
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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):
info@conneely.ca
jconneely@rogers.com
joe@conneely.ca
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LOKI JORGENSON and ALFRED YU-HAN PANG
____________

Appeal 2019-001947
Application 14/248,094
Technology Center 3600
____________

Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–19, 21–41, and 43–45. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Inetco Systems Limited, as the
Applicant and real party in interest. Appeal Br. 3.
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THE INVENTION
Appellant’s invention relates to network message monitoring. Spec.
¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for monitoring performance of an application
system which is distributed across a plurality of network
connected nodes, comprising:
using a processor, monitoring network traffic between the
plurality of network connected nodes of the application system
to gather network traffic data;
assembling the network traffic data into application
messages;
correlating the application messages into sets of one or
more application messages that constitute transactions
corresponding to a lowest level of a plurality of levels of a
hierarchical model of the application system, each level
including components having a span of network connected
nodes specific to that level, and each level and the span of each
level being defined by function; and
generating records for one or more of the transactions.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Ramanathan US 6,701,459 B2 Mar. 2, 2004
Chaar US 6,857,020 B1 Feb. 15, 2005
Kelly US 2006/0277288 Al Dec. 7, 2006
Pfuntner US 2010/0070447 Al Mar. 18, 2010
Bansal US 7,805,510 B2 Sept. 28, 2010
Urban US 7,822,837 Bl Oct. 26, 2010
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The following rejections are before us for review:
1. Claims 1–19, 21–41, and 43–45 are rejected under 35 U.S.C. § 101
as directed to a judicial exception to patent eligible subject matter.
2. Claims 1–19, 21–41, and 43–45 are rejected under 35 U.S.C.
§ 112(a) for failing to comply with the written description requirement.
3. Claims 1–6, 12, 13, 19, 22–29, 35, 41, 44, and 45 are rejected
under 35 U.S.C. § 103 as being unpatentable over Bansal and Pfuntner.
4. Claims 7, 8, 10, 11, 36, 37, 39, and 40 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Bansal, Pfuntner, and Kelly.
5. Claims 9, 21, 38, and 43 are rejected under 35 U.S.C. § 103 as
being unpatentable over Bansal, Pfuntner, and Ramanathan.
6. Claims 14–17 and 30–33 are rejected under 35 U.S.C. § 103 as
being unpatentable over Bansal, Pfuntner, and Urban.
7. Claims 18 and 34 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bansal, Pfuntner, Urban, and Chaar.
OPINION
Patent Eligibility under 35 U.S.C. § 101
Claim 1
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 courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71
(2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “consider the elements of each 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.” Id.
Courts treat collecting information as well as analyzing information
by steps people go through in their minds as essentially mental processes
within the abstract-idea category. FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093 (Fed. Cir. 2016). In situations where an abstract idea is
implemented on a computer, the first step in the Alice/Mayo analysis asks
whether the focus of the claims is on a specific improvement in computer
capabilities or, instead, on a process that qualifies as an “abstract idea” for
which computers are invoked merely as a tool. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
The Supreme Court characterizes the second step of the analysis as “a
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.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72–73). Where the claim is directed to an abstract idea that is
implemented on a computer, merely stating the abstract idea while adding
the words “apply it” is not enough to establish such an inventive concept.
See Alice, 573 U.S. at 223.
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[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 224.
The PTO recently published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidelines”). Under such guidelines, in
conducting step one of the Alice framework, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Step 1, Prong 1
The 2019 Guidelines identifies three key concepts identified as
abstract ideas:
(a) mathematical concepts including “mathematical
relationships, mathematical formulas or equations,
mathematical calculations”;
(b) certain methods of organizing human activity, such as
“fundamental economic principles or practices,” “commercial
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or legal interactions,” and “managing personal behavior or
relationships or interactions between”; and
(c) mental processes including “observation, evaluation,
judgment, [and] opinion.”
84 Federal Register at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Action 8. According to the Examiner,
the steps are directed to an abstract in the form of collecting, assembling,
and correlating information. Id. citing Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016); Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and Parker v.
Flook, 437 U.S. 584 (1978).
Here, Appellant argues that claim 1 is not directed to an abstract idea,
analogizing their invention to that of BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). However, Appellant’s
reliance on BASCOM for the proposition advanced in the Appeal Brief is
misplaced. The BASCOM court found that the claims at issue were, indeed,
directed to an abstract idea. Id. at 1348. (“We agree with the district court
that filtering content is an abstract idea”).
There is little question here that claim 1 recites an abstract idea.
Appellant’s Specification explains that the invention relates to methods for
monitoring the performance of an application system that is distributed
across a plurality of network connected nodes. Spec. ¶ 7. In furtherance
thereof, the method gathers network traffic data, assembles such data into
messages, correlates such messages into sets, and generates records of
transactions occurring within the system. Id.
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“Information as such is an intangible,” hence abstract. Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Consequently, claims focused on “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are directed to an
abstract idea. FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016). The claims here relate to monitoring information,
assembling data, and generating records. Claims App. This concept is
captured in the recitations of claim 1 and is considered to be a mental
process under the 2019 Guidelines.
Step 1, Prong 2
Under Prong 2 of Step 1 of the 2019 Guidelines, we do not assume
that such claims are directed to patent ineligible subject matter because “all
inventions [at some level] embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice. Instead,
“the claims are considered in their entirety to ascertain 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). If
the claims are not directed to an abstract idea, the inquiry ends. 2019
Guidelines. If the claims are “directed to” an abstract idea, then the inquiry
proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether the claimed monitoring method
includes additional elements that integrate the judicial exception into a
practical application. A claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
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the claim is more than a drafting effort designed to monopolize the judicial
exception. 2019 Guidelines.
Here, Appellant argues that the claims are directed to a specific
method for monitoring performance of an application system which,
according to Appellant, “is not an abstract idea.” Appeal Br. 35. In
response, the Examiner states that, unlike BASCOM, Appellant’s claim
merely recites an abstract idea along with what amounts to instructions to
apply it using a computer. Ans. 10.
Although automating certain tasks may be patent eligible if properly
claimed (See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016)), we are not persuaded by Appellant’s effort to
characterize a specific method for monitoring performance of an application
system as a technological improvement analogous to that of McRO. Here,
the method of claim 1 generally comprises four functional method steps,
namely:
(1) monitoring network traffic . . . ,
(2) assembling the network traffic . . . ,
(3) correlating . . . messages into sets . . . , and
(4) generating records . . .
Claims App. In short, the method collects, processes, and presents
information about the performance of a computer application over a
network.
Appellant argues that it employs “technical means” for gathering and
correlating network data. Appeal Br. 33. However, the only “technical
means” recited in claim 1 is “using a processor.” Claims App. The prospect
that Appellant’s method uses a computerized “tool” does not render the
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claims less abstract. An abstract idea does not become nonabstract by
limiting the invention to a particular technological environment. Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir.
2015); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016) (Merely limiting the field of use of the abstract idea to
a particular existing technological environment does not render the claims
any less abstract); see also Alice, 573 U.S. at 224 (the fact a computer exists
in the physical realm is beside the point). Unlike Enfish, the focus of the
instant claims is not on improving a computer, but rather on a process for
which computers are invoked merely as a tool. See Enfish, 822 F.3d
at 1335–36. The following passages from Appellant’s Specification are
exemplary:
[I]n the case of monitoring network data traffic, the lowest level
of events may be the arrival of network IP packets at a
monitoring interface placed within the IP network of an IT
system 800. The monitoring interface 350 may receive a copy
of all packets arriving at all of the network interfaces within the
IT system 800, such as when a SPAN (switched port analyzer)
port is created on a network switch. With knowledge of IP
addresses and the nature of the TCP and IP protocols, packets
may be selected from the stream of arriving packets and
grouped by timestamp, source and destination IP addresses,
TCP sequence number, TCP port number, and the like. The
monitoring system 300 can assemble IP packets into TCP
segments, and subsequently assemble the segments into
application protocol messages.
Spec. ¶ 88.
With respect to metrics, in this view, transactions associated
with each level of the implementation may be analyzed by one
or more metrics specific to that level. Each metric may then
produce a measure of performance that is responsive to factors
specific to that level. These factors may include the following:
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(1) The individuals, groups, or roles who are involved in
testing, managing, or troubleshooting related aspects of the
business system. For example: network operators may be most
interested in the performance of link transactions; application
developers, systems integrators, and service operators,
including those responsible for relationships with third parties,
may be most interested in the performance of service
transactions; and, business managers, customer relations agents,
and end-users may be most interested in the performance of
application transactions; (2) Typical or standardized metrics
used within an existing and related sphere of IT management.
Id. ¶ 103.
The FairWarning case entailed a method of detecting improper access
of a patient’s protected health information in a computer environment.
FairWarning, 839 F.3d at 1092. The claimed method in FairWarning
generated a rule for monitoring data, applied the rule, stored events in
computer memory, and notified users that an event has occurred. Id. The
Federal Circuit found that such claim was directed to an abstract idea. Id.
at 1093. Appellant’s claimed method of monitoring, assembling,
correlating, and reporting is no more directed to a practical application than
that of FairWarning. The Examiner is correct that “the mere mention or
involvement of particular signals or structures is not enough to preclude the
claims from being directed to an abstract idea.” Ans. 12.
The claims, thus, fail to integrate the judicial exception into a practical
application and, therefore, is “directed to” an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
claim is directed to. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
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(Fed. Cir. 2018). “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].’” Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be
more than well-understood, routine, conventional activity. Mayo, 566 U.S.
at 79.
Under step two of the Alice/Mayo framework, the Examiner
determines that the steps of Appellant’s monitoring method, considered both
individually and in combination, do not amount to significantly more than
the abstract idea. Final Action 8–9. Specifically, the Examiner finds that:
Moreover, the elements in the claims other than the abstract
idea amount to no more than (i) mere instructions to implement
the idea on a computer; (ii) recitation of generic computer
structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities
previously known to the pertinent industry; (iii) insignificant
extra-solution activity; and/or (iv) limitations that link the
abstract idea to a particular technological environment or field
of use but do not impose meaningful limits on the abstract idea .
. . . Viewed as a whole, these additional claim elements do not
provide meaningful limitations to transform the abstract idea
into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea
itself.
Id.
Appellant argues that the method is not directed to monitoring “in the
abstract” as it recites limitations and an inventive concept that practically
applies the abstract idea when the claim elements are considered both
individually and in combination. Appeal Br. 35–36. Appellant further
argues that claim 1 does not operate on a “generic” computer structure. Id.
at 36. Appellant further argues that it provides an improvement to “another
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technology or technical field,” namely, network performance monitoring.
Id.
In response, the Examiner points out that claim 1 merely recites a
generic “processor.” Ans. 13. In response to Appellant’s argument about
providing an improvement to the technical field of network monitoring, the
Examiner states that the claims do not recite an improved computer or
monitoring device, rather, they recite an abstract idea implemented on a
generic “processor.” Id. at 14.
The Examiner’s position is the correct one. What Appellant points to
as “inventive” is just the abstract idea itself. Appeal Br. 35–37. We may
assume that the techniques claimed are “[g]roundbreaking, innovative, or
even brilliant,” but that is not enough for eligibility. SAP Am., 898 F.3d at
1163 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013)). Appellant’s steps of monitoring, assembling,
correlating, and recording merely tell a computer to “apply” the abstract idea
of step 1. However, it does not matter how innovative Appellant’s abstract
idea is, as a claim for a new abstract idea is still an abstract idea. Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
According to Appellant’s Specification, the data processing system
used by the invention may be a server or a personal computer system. Spec.
¶ 35. The system includes an input device such as a mouse and keyboard.
Id. The system display may be a computer screen. Id. The system memory
may include a variety of storage devices including internal memory and
external mass storage typically arranged in a hierarchy of storage as
understood by those skilled in the art, such as databases, random access
memory, read-only memory, flash memory, and disk devices. Id. The
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system may include one or more network connections and be adapted for
communication with other data processing systems. Id.
Appellant uses a computer processor to gather, assemble, and report
data. Claims App. claim 1. There is no indication in the Specification that
Appellant has achieved an advancement or improvement in computer
processing technology. See generally Spec. There is similarly no indication
in the Specification that Appellant has achieved an advancement or
improvement in network technology. Id.
Appellant argues that the Examiner’s rejection fails to comport with
Office Guidance that was published after Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018). Appeal Br. 33. Appellant further argues that the
instant claims are similar to those at issue in Berkheimer. These arguments
are not persuasive. In the first instance, Berkheimer is an appeal from a
District Court that dealt with an issue of pre-trial motion practice and,
contrary to Appellant’s position, did not determine that the claims in that
case were patent eligible.
We do not decide today that claims 4–7 are patent eligible
under § 101. We only decide that on this record summary
judgment was improper, given the fact questions created by the
specification’s disclosure.
Id. at 1370. In the second instance, having reviewed the Examiner’s
rejection and Appellant’s Specification, it is our view that the rejection
complies with applicable PTO guidelines. Among other things, it is
established that a patent applicant is required to submit a specification that
contains a written description of the invention in “full, clear, concise, and
exact terms.” 35 U.S.C. § 112(a). In the instant case, Appellant describes
the computer technology used by the invention at a high level of generality
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that presumes familiarity on the part of the reader. See, e.g., Spec. ¶ 35.
Appellant provides neither evidence nor persuasive argument to the
contrary. For purposes of the Alice/Mayo analysis, a specification
demonstrates the well-understood, routine, conventional nature of step 2
“additional elements” when it describes them in a manner that indicates they
are sufficiently well-known that they need not be described with
particularity to satisfy 35 U.S.C. § 112(a).2 That is the case here.
Essentially, all Appellant has done here is use generic computer
equipment to monitor and analyze network traffic and generate records
related thereto. This is quintessentially collecting information, analyzing it,
and displaying certain results of the collection and analysis. FairWarning,
839 F.3d at 1093–94. Appellant’s method recites an “abstract idea” for
which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36.
In short, claim 1 is directed to an abstract idea that is implemented on a
computer in a manner that merely states the abstract idea while adding the
words “apply it.” See Alice, 573 U.S. at 223. This is not sufficient for
patent eligibility. Id.
Appellant argues that claim 1 does not tie up or preempt the abstract
idea. Appeal Br. 35. This argument is not persuasive as it is well settled
that “[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).

2 Memorandum from the U.S. Patent & Trademark Office, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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We have considered Appellant’s remaining arguments and find them
to be without merit. Accordingly, for the above reasons, the recited
elements of claim 1, considered individually and as an ordered combination,
do not constitute an “inventive concept” that transforms independent claim 1
into patent-eligible subject matter. On this record, we affirm the Examiner’s
§ 101 rejection of claim.
Claims 2–19, 21–41, and 43–45
Appellant does not argue for the patentability of claims 2–19, 21–41,
and 43–45 apart from arguments presented with respect to claim 1, which we
have previously considered. We sustain the Examiner’s Section 101
rejection of claims 2–19, 21–41, and 43–45.
Written Description
The Examiner determines that the phrase “each level and the span of
each level being defined by function” recited in each of independent
claims 1, 22, 23, and 45 lacks written description support. Final Action 11.
In so doing, the Examiner observes that such language was added to the
claims by amendment during prosecution. Id.
Appellant argues that paragraphs 33, 45, 48, 53, 54, 66, 67, 68, 88,
and 106 of the Specification support the amended claim language. Appeal
Br. 31. More specifically, Appellant argues that the following language
provides the requisite support:
The UTM describes the structures, relationships, and message
events that are particular to message-based transactional
systems. The UTM is beneficial for information technology
("IT") systems (e.g., 800 in FIG. 8) that are distributed, multi-
tier, and composed of multiple network links, and thus
complex. In implementation, it decomposes the IT system 800
into a nested set of regions or "spans" according to the
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network topology 810 and functional implementation of its
components.
Id. (emphasized portion quoted in the Appeal Brief).3
The Examiner, in response, is unable to locate support for the phrase
at issue in any of the paragraphs cited by Appellant in the Appeal Brief.
Ans. 8–9. In particular, the Examiner finds that the “decomposes” phrase
quoted in the preceding paragraph is not enough to support “each level” and
“the span of each level” being “defined by function.” Id. at 9. The
Examiner briefly discusses and then makes similar observations as to
paragraphs 45, 48, 53, 54, 66–68, 88, and 106 of the Specification. Id.
Paragraph 32 of the Specification cross-references Figure 8 in
Appellant’s drawings. Figure 8 depicts a distributed, multi-tier information
technology systems composed of multiple network links. Spec. ¶ 32, Fig. 8.
Figure 8 depicts a plurality of nodes (e.g., element 110) distributed among
interconnected Web-Banking Clients, Web Servers, Business Logic Servers,
Search Engines, a Transaction Aggregator, and a Transaction Processor. Id.
The system is further connected to a Database Server, an ATM Network, a
Payment Network, and Bank Branch clients. Id.
Appellant’s invention aggregates transactions that are causally related
to and span one or more links of the system. Id. ¶ 30, Fig. 18. A
hierarchical model is applied to the network topology and determines the
span of links across which individual transactions are associated. Id. The
hierarchy of levels extends across the network topology, each level
corresponding to a degree of span, from the individual network links up to

3 Appellant’s Appeal Brief erroneously states that the recited portion is from
paragraph 33 of the Specification. Our review of the Specification reveals
that recited portion is from paragraph 32, not 33, of the Specification.
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the entire system, with a definition of transaction specific to each level. Id.
Transactions on each level are defined as comprising one or more
transactions from a next lower level, across one or more spans of that level
of the network topology. Id. In summary, Appellant’s invention
encompasses both structural and functional features.
The written description requirement of 35 U.S.C. § 112 provides, in
pertinent part, that “[t]he specification shall contain a written description of
the invention.” That requirement is satisfied only if the inventor conveys
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention, and demonstrates that
by disclosure in the specification of the patent. Centocor Ortho Biotech, Inc.
v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011). “The essence of the
written description requirement is that a patent applicant, as part of the
bargain with the public, must describe his or her invention so that the public
will know what it is and that he or she has truly made the claimed
invention.” AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759
F.3d 1285, 1298 (Fed. Cir. 2014); see also Nuvo Pharmaceuticals (Ireland)
Designated Activity Company v. Dr. Reddy’s Labs Inc., 923 F.3d 1368, 1377
(Fed. Cir. 2019).
Having reviewed Appellant’s Specification, we cannot agree with
Appellant’s argument that the paragraphs of the Specification cited in the
Appeal Brief provide written description for the claim limitation “each level
and the span of each level being defined by function.” Appellant’s invention
requires the monitoring of multiple levels in a hierarchical model and the
effective claim language requires that each level and the span of each level
be defined by function. Appellant’s method is applied to a physical system
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that necessarily is comprised of a plurality of physical, structural
components. According to Appellant’s Specification, the term “data
processing system” refers to any machine for processing data, including the
computer systems, wireless devices, and network arrangements. Spec. ¶ 29.
The Specification further states that: “certain software, circuits, structures
and methods have not been described or shown in detail in order not to
obscure the invention.” Id. A reasonable and fair reading of the
Specification allows for one or more levels of Appellant’s claimed “plurality
of levels” to be defined by structure, as opposed to “by function.” Appellant
fails to provide written description support for an invention where “each”
level is “defined” – “by function.”
In view of the foregoing, we sustain the Examiner’s Section 112
written description rejection of independent claims 1, 22, 23, and 45. The
remaining claims subject to this ground of rejection are dependent claims
that fall with the independent claims.
Unpatentability of Claims 1–19, 21–41, and 43–45
over Combinations Based on Bansal and Pfuntner
The Examiner finds that Bansal discloses the invention substantially
as claimed except for, for each level, the span of network connected nodes is
specific to that level, and each level and the span of each level being defined
by function, for which the Examiner relies on Pfuntner. Final Action 12–13.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify
Bansal’s system with the teachings of Pfuntner to achieve the claimed
invention. Id. at 13. According to the Examiner, a person of ordinary skill
Appeal 2019-001947
Application 14/248,094
19
in the art would have done this to simplify the process by which
administrators configure how performance data is collected. Id.
Appellant first argues that Bansal fails to correlate messages into sets
as claimed. Appeal Br. 20. Appellant argues that Bansal’s hierarchy is not
unique to a given business process. Id. Appellant argues that the claimed
invention “is configured for the network topology of the application system
being monitored.” Id.
In response, the Examiner states, in essence, that Appellant’s
arguments attempt to read limitations from Appellant’s Specification into the
claims. Ans. 4. The Examiner points out that the claims do not require the
model to be configured for the network topology of the application system
being monitored. Id. The Examiner finds, and Appellant does not dispute,
that Bansal discloses correlating messages into a plurality of levels of a
hierarchy. Id.
Next, Appellant argues that the applied references do not teach each
level being defined by function as claimed. Appeal Br. 5. In response, the
Examiner notes that Appellant’s arguments are not commensurate with the
scope of claim 1. Ans. 5. The Examiner further finds, and Appellant does
not dispute, that:
Pfuntner discloses . . . levels such as a web server level 204
composed of multiple web servers and a database level 206
composed of multiple databases, where nodes with a web server
function are organized into the web server level and nodes with
a database function are organized into the database level, and
where the “span” of each level is limited to the span of servers
having that level’s respective function.
Appeal 2019-001947
Application 14/248,094
20
Id. at 5–6. Appellant fails to articulate a meaning of the phrase “defined by
function” in a manner that distinguishes the spans of claim 1 from the spans
of Pfuntner. See generally Appeal Br.
Finally, Appellant argues that Pfuntner is not properly combinable
with Bansal. Appeal Br. 24. Appellant argues that combining Bansal and
Pfuntner would change the principle of operation of Bansal and render
Bansal inoperable for its intended purpose. Appeal Br. 24.
In response, the Examiner notes, in essence, that Appellant’s
arguments concerning changing the principal of operation of Bansal and
rendering it inoperable for its intended purpose are conclusory and
unsupported. Ans. 6. We agree. Bansal is directed to a hierarchical
application monitoring system. Bansal, Abstract. The Examiner’s rejection
merely proposes to modify Bansal so that hierarchical levels are defined by
function. We fail to see how such modification would change Bansal’s
principle of operation or render it inoperable for its intended purpose.
We have considered Appellant’s remaining arguments and find them
to be without merit. In view of the foregoing discussion, we determine the
Examiner’s findings of fact are supported by a preponderance of the
evidence and that the Examiner’s legal conclusion of unpatentability is well-
founded. Accordingly, we sustain the Examiner’s unpatentability rejection
of claim 1. Moreover, inasmuch as Appellant fails to offer separate
arguments for the patentability of the remaining claims apart from
arguments that we have considered with respect to claim 1, we sustain the
Examiner’s unpatentability rejection of claims 1–19, 21–41, and 43–45.
Appeal 2019-001947
Application 14/248,094
21
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Basis Aff’d Rev’d
1-19, 21-41,
43-45
101 Patent Ineligible
Subject Matter
1-19, 21-41,
43-45

1-19, 21-41,
43-45
112 Written Description 1-19, 21-41,
43-45

1-6, 12, 13,
19, 22–29,
35, 41, 44, 45
103 Bansal, Pfuntner 1-6, 12, 13, 19,
22-29, 35, 41,
44, 45

7, 8, 10, 11,
36, 37, 39, 40
103 Bansal, Pfuntner,
Kelly
7, 8, 10, 11, 36,
37, 39, 40

9, 21, 38, 43 103 Bansal, Pfuntner, and
Ramanathan
9, 21, 38, 43
14-17, 30-33 103 Bansal, Pfuntner,
Urban
14-17, 30-33
18, 34 103 Bansal, Pfuntner,
Urban, Chaar
18, 34
Overall
Outcome
1-19, 21-41,
43-45

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED