Leonid Reznik et al.Download PDFPatent Trials and Appeals BoardAug 2, 201914266135 - (D) (P.T.A.B. Aug. 2, 2019) 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. 14/266,135 04/30/2014 Leonid Reznik 83822656 1028 146568 7590 08/02/2019 ENTIT SOFTWARE LLC 500 Westover Drive #12603 Sanford, NC 27330 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): software.ip.mail@microfocus.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte LEONID REZNIK, YURI MOSHAYEV, YARIV SNAPIR, MICHAEL DIKMAN, and DAN NOTER ________________ Appeal 2018-003815 Application 14/266,1351 Technology Center 3600 ________________ Before DENISE M. POTHIER, JASON J. CHUNG, and MATTHEW J. McNEILL, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1–10, 12, 13, and 15–19.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, EntIT Software LLC is the real party in interest. App. Br. 2. 2 According to Appellants’ listing of claims, filed June 13, 2017, claims 11 and 14 are canceled. Appeal 2018-003815 Application 14/266,135 2 INVENTION The invention relates to recommending actions to an Information Technology (IT) case, such as an incident or request. Spec. Abstract, ¶ 6. Claim 1 is illustrative of the invention and is reproduced below with emphases that will be discussed infra in § I.C.1.: 1. A system comprising: a processor; and a non-transitory storage medium storing instructions executable on the processor to: index a plurality of Information Technology (IT) data sources in an index; receive a first IT case to be handled by an IT agent; responsive to a receipt of the indication of the first IT case, search the index for one or more IT cases that match the received first IT case, wherein the one or more IT cases include an open IT case; identify a plurality of actions for the received first IT case based on the zone or more IT cases; provide a recommended subset of actions from the plurality of actions for the received first IT case to the IT agent; based on feedback regarding actions that have been implemented to address IT cases, dynamically update the recommended subset of actions for the received first IT case; responsive to a selection by the IT agent of a first action from the recommended subset of actions, perform the first action for the received first IT case; and responsive to a performance of the first action for the received first IT case, perform the first action for the open IT case of the one or more IT cases. Appeal 2018-003815 Application 14/266,135 3 REJECTION AT ISSUE Claims 1–10, 12, 13, and 15–19 stand rejected under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act. 3–6. ANALYSIS I. Claims 1–10, 12, 13, and 15–19 Rejected Under 35 U.S.C. § 101 A. Legal Principles 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. Kappos, 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); Appeal 2018-003815 Application 14/266,135 4 mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. 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 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 192 (“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. (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 turn 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- Appeal 2018-003815 Application 14/266,135 5 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. (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. The PTO recently published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Memorandum”). Under that guidance, 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 activity 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)). 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 are 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 Memorandum. Appeal 2018-003815 Application 14/266,135 6 B. The Examiner’s Conclusions and Appellants’ Arguments The Examiner concludes the present claims recite mental processes and are analogous to the claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) and FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016). Final Act. 4; Ans. 3–4. The Examiner also determines the present claims do not amount to significantly more than an abstract idea itself because the abstract idea is implemented on generic components that are well-understood, routine, and conventional previously known to the industry. Final Act. 4–5. Appellants argue the Examiner improperly concludes the abstract idea as a restatement of the limitations recited in the present claims rather than mapping the present claims to a specific abstract idea. App. Br. 7–8. Appellants argue, similar to the claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308–14 (Fed. Cir. 2016), the present claims are directed to an improvement in computer-related technology because the present claims reuse existing knowledge of IT agents, decrease the number of searches, conserve resources of the organization as compared to individual searching, and search across a plurality of different knowledge sources. App. Br. 9–11 (citing Spec. ¶¶ 7–8). For the below reasons, we agree with Appellants that the present claims are directed to an improvement in computer-related technology. C. Discussion 1. Step 2A, Prong 1 The emphasized portions of claim 1, reproduced above (see supra at 2), recite concepts that may be performed in the human mind through observation, evaluation, and judgment, including identifying a plurality of Appeal 2018-003815 Application 14/266,135 7 actions for a received first IT case based on one or more IT cases, providing a recommended subset of actions from the plurality of actions for the received first IT case, and dynamically updating the recommended subset of actions for the received first IT case. According to the Memorandum, concepts performed in the human mind fall into the category of mental processes. See Memorandum. Moreover, those mental processes are a type of an abstract idea. See id. The Examiner indirectly concluded the present claims recite a mental process by citeing to Electric Power; in Electric Power, the court held that the claims were directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” which is a mental process (i.e., an abstract idea). Electric Power, 830 F.3d at 1355–1356. The Examiner also cited to Fairwarning; in Fairwarning, the court held that the claims were directed to “collecting and analyzing information to detect misuse and notifying a user when misuse is detected,” which is a mental process (i.e., an abstract idea). Fairwarning , 839 F.3d 1089 at 1094, 1098. We, therefore, disagree with Appellants’ argument that the Examiner fails to map the present claims to a specific abstract idea. App. Br. 7–8. Because the present claims recite concepts performed in the human mind, which fall into the category of mental processes (i.e., an abstract idea), we proceed to prong 2. 2. Step 2A, Prong 2 The present claims integrate the abstract idea into a practical application because they impose meaningful limits on practicing the abstract idea. In particular, claim 1 recites the combination of additional elements of: (1) index a plurality of Information Technology (IT) data sources in an Appeal 2018-003815 Application 14/266,135 8 index; (2) receive a first IT case to be handled by an IT agent; (3) responsive to a receipt of the indication of the first IT case, search the index for one or more IT cases that match the received first IT case, wherein the one or more IT cases include an open IT case; (4) responsive to a selection by the IT agent of a first action from the recommended subset of actions, perform the first action for the received first IT case; and (5) responsive to a performance of the first action for the received first IT case, perform the first action for the open IT case of the one or more IT cases. See M.P.E.P. § 2106.05(e). In addition, similar to Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018), the present claims employs a new kind of index that enables searching that it could not perform previously. We agree with Appellants that the present claims as a whole are directed to a particular improvement in computer-related technology. App. Br. 9–11 (citing Spec. ¶¶ 7–8). Indeed, as described in the instant Specification, the present claim limitations (1)–(5) reuse existing knowledge of IT agents from an index created from multiple data sources, decrease the number of searches using this specific index, conserve resources of the organization as compared to individual searching through the specific indexing and matching, and search across a plurality of different knowledge sources in the particularly recited index, which is an improvement in computer-related technology. See Spec. ¶¶ 7–8.3 We disagree with the Examiner’s conclusion that Electric Power and Fairwarning bind us to conclude the present claims are patent ineligible for 3 Claim 12 further recites performing the first action “responsive to a selection by the IT agent of the first action from the updated subset of actions” (emphasis added). Appeal 2018-003815 Application 14/266,135 9 at least the reasons stated supra. Stated differently, we conclude that the additional elements analyzed as a whole illustrate the present claims are directed to a particular improvement in computer-related technology. Because the present claims recite an abstract idea that is integrated into a practical application, we need not proceed to Step 2B. Accordingly, we do not sustain the Examiner’s rejection of: (1) independent claims 1; (2) claims 7 and 12, which recite commensurate limitations; and (3) dependent claims 2–6, 8–10, 13, and 15–19 under 35 U.S.C. § 101. DECISION We reverse the Examiner’s decision rejecting claims 1–10, 12, 13, and 15–19 under 35 U.S.C. § 101. REVERSED Copy with citationCopy as parenthetical citation