OPOWER, INC.Download PDFPatent Trials and Appeals BoardMar 30, 202013765045 - (D) (P.T.A.B. Mar. 30, 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. 13/765,045 02/12/2013 Janet Yu OP-0018-US 7318 51444 7590 03/30/2020 Kraguljac Law Group/Oracle 4700 Rockside Road Summit One, Suite 510 Independence, OH 44131 EXAMINER HARRINGTON, MICHAEL P ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): DDay@KragLaw.com MPusti@KragLaw.com PTOMail@KragLaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JANET YU, TOM MERCER, ERIC CHANG, RICHARD TYLER CURTIS, and DANIEL J. YATES ____________ Appeal 2019-005711 Application 13/765,045 Technology Center 3600 ____________ Before ERIC S. FRAHM, CATHERINE SHIANG, and JOHN D. HAMANN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–25, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Oracle International Corporation as the real party in interest. Appeal Br. 2. Appeal 2019-005711 Application 13/765,045 2 STATEMENT OF THE CASE Introduction The present invention relates to reducing commodity usage. See Spec. ¶ 3. In particular, In accordance with illustrative embodiments, a computer- implemented method is provided for reducing a usage or cost of a commodity by reporting to consumers of their unusual usage of the commodity during a current billing period. The computer system retrieves a set of usage-information datasets corresponding to a set of consumers. Each dataset may include a) past usage of the commodity during at least one of a completed billing period that may correspond to a period of similar seasonality as the current billing period and b) a current usage of the commodity during a completed portion of the current billing period. The commodity refers to a utility-based commodity, such as electricity, water, gas, or an aggregation of several resources, such as total energy. Spec. ¶ 3. Claim 1 is exemplary: 1. A computer-implemented method of reducing a usage or cost of a commodity by reporting to consumers unusual usage of the commodity, the computer-implemented method comprising: retrieving, using one or more processors, a plurality of usage-information datasets, each usage-information dataset corresponding to usage of the commodity by a consumer based upon data retrieved from an energy management system at a premises of the consumer, each usage-information dataset including past usage of the commodity; generating, using the one or more processors, a distribution of predicted alert occurrences across a plurality of potential threshold levels using a set of historical customer usage data for the commodity from the plurality of usage- information datasets; analyzing, using the one or more processors, the distribution of predicted alert occurrences to select a first Appeal 2019-005711 Application 13/765,045 3 threshold level from amongst the plurality of potential threshold levels based at least in part on a determination that the first threshold level is predicted to, upon implementation as a report- trigger condition for a set of consumers, provide for at least one alert being sent to a maximum number of consumers of the set of consumers while sending less than a threshold number of alerts on average to each consumer of the set of consumers; establishing, using the one or more processors, a plurality of report-trigger conditions, each report-trigger condition corresponding to a consumer and based at least in part on a specified percentage of a baseline of the past usage in a usage- information dataset, the specified percentage corresponding to the first threshold level; determining, using the one or more processors, that an estimated usage established for a first consumer fulfills a first report-trigger condition, of the plurality of report-trigger conditions, for the first consumer; generating an electronic message including information to reduce usage of the commodity by the first consumer; and controlling transmission of the electronic message, via a network connection, to an electronic device comprising a thermostat at a premises of the first consumer, wherein the electronic message is configured to cause the electronic device to display at least a portion of the electronic message. Rejection2 Claims Rejected 35 U.S.C. § Basis 1–25 101 Subject Matter Eligibility 2 Throughout this opinion, we refer to the (1) Final Office Action dated Sept. 26, 2018 (“Final Act.”); (2) Appeal Brief dated Mar. 25, 2019 (“Appeal Br.”); (3) Examiner’s Answer dated May 22, 2019 (“Ans.”); and (4) Reply Brief dated July 22, 2019 (“Reply Br.”). Appeal 2019-005711 Application 13/765,045 4 ANALYSIS 35 U.S.C. § 101 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in this case. Section 101 of the Patent Act provides “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). 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 Appeal 2019-005711 Application 13/765,045 5 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)). 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 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. (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 Appeal 2019-005711 Application 13/765,045 6 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 (citation 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. In 2019, the United States Patent and Trademark Office published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under the 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) (Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev. 08.2017 2018) (Step 2A, Prong 2). 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 The Guidance was updated in October 2019. Appeal 2019-005711 Application 13/765,045 7 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54–56. Turning to Step 2A, Prong 1 of the Guidance, claim 1 (with emphases) recites: 1. A computer-implemented method of reducing a usage or cost of a commodity by reporting to consumers unusual usage of the commodity, the computer-implemented method comprising: retrieving, using one or more processors, a plurality of usage-information datasets, each usage-information dataset corresponding to usage of the commodity by a consumer based upon data retrieved from an energy management system at a premises of the consumer, each usage-information dataset including past usage of the commodity; generating, using the one or more processors, a distribution of predicted alert occurrences across a plurality of potential threshold levels using a set of historical customer usage data for the commodity from the plurality of usage- information datasets; analyzing, using the one or more processors, the distribution of predicted alert occurrences to select a first threshold level from amongst the plurality of potential threshold levels based at least in part on a determination that the first threshold level is predicted to, upon implementation as a report- trigger condition for a set of consumers, provide for at least one alert being sent to a maximum number of consumers of the set of consumers while sending less than a threshold number of alerts on average to each consumer of the set of consumers; establishing, using the one or more processors, a plurality of report-trigger conditions, each report-trigger condition corresponding to a consumer and based at least in part on a specified percentage of a baseline of the past usage in a usage-information dataset, the specified percentage corresponding to the first threshold level; Appeal 2019-005711 Application 13/765,045 8 determining, using the one or more processors, that an estimated usage established for a first consumer fulfills a first report-trigger condition, of the plurality of report-trigger conditions, for the first consumer; generating an electronic message including information to reduce usage of the commodity by the first consumer; and controlling transmission of the electronic message, via a network connection, to an electronic device comprising a thermostat at a premises of the first consumer, wherein the electronic message is configured to cause the electronic device to display at least a portion of the electronic message. Because the italicized functions can be performed by a person, they are like the mental processes in CyberSource and Synopsys. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. . . . Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e continue to ‘treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.’”) (citation omitted). For example, a person can “generat[e] . . . a distribution of predicted alert occurrences across a plurality of potential threshold levels using a set of historical customer usage data for the commodity from the plurality of usage-information datasets” by drawing the distribution on paper. A person can also “establish[] . . . a plurality of report-trigger conditions, each report- trigger condition corresponding to a consumer and based at least in part on a specified percentage of a baseline of the past usage in a usage-information Appeal 2019-005711 Application 13/765,045 9 dataset, the specified percentage corresponding to the first threshold level” by writing the conditions on paper. Similarly, a person can “determin[e] . . . that an estimated usage established for a first consumer fulfills a first report- trigger condition, of the plurality of report-trigger conditions, for the first consumer” by calculating the estimated usage using a pen and paper. As a result, we conclude claim 1 recites mental processes, and thus an abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas). For similar reasons, each of claims 2–25 recites mental processes, and thus an abstract idea. Although claim 1 recites an abstract idea, the Federal Circuit explains the “directed to” inquiry is not simply asking whether the claims involve a patent-ineligible concept: The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”). Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a whole “focus on a specific means or method that improves the relevant Appeal 2019-005711 Application 13/765,045 10 technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”). Therefore, we proceed to Step 2A, Prong 2 of the Guidance to determine whether additional elements of the claim integrate the mental processes into a practical application. Such additional elements may reflect an improvement to a technology or technical field. See Guidance, 84 Fed. Reg. at 55. We determine additional elements of claim 1 integrate the abstract idea into a practical application. In particular, the additional elements analyzing, using the one or more processors, the distribution of predicted alert occurrences to select a first threshold level from amongst the plurality of potential threshold levels based at least in part on a determination that the first threshold level is predicted to, upon implementation as a report- trigger condition for a set of consumers, provide for at least one alert being sent to a maximum number of consumers of the set of consumers while sending less than a threshold number of alerts on average to each consumer of the set of consumers; . . . generating an electronic message including information to reduce usage of the commodity by the first consumer; and controlling transmission of the electronic message, via a network connection, to an electronic device comprising a thermostat at a premises of the first consumer, wherein the electronic message is configured to cause the electronic device to display at least a portion of the electronic message reflect technology improvement of a customized method for conserving commodity, such as energy. See claim 1; Spec. ¶ 3 (the “commodity refers to a utility-based commodity, such as electricity, water, gas, or an aggregation of several resources, such as total energy”); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. Appeal 2019-005711 Application 13/765,045 11 2016) (“The inventive concept described and claimed . . . is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. BASCOM explains that the inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account.” (emphases added)); see also Appeal Br. 23. Our determination is supported by the Specification, which describes the technology improvement of a customized method for conserving commodity, such as energy. See, e.g., Spec. ¶¶ 35–49, 53–54, 59, 62, 69. Because the additional elements of claim 1 integrate the mental processes into a practical application, we determine claim 1 is not directed to an abstract idea. See Guidance, Step 2A, Prong 2. For similar reasons, each of claims 2–25 integrates the mental processes into a practical application, and is not directed to an abstract idea. Therefore, we reverse the rejection of claims 1–25 under 35 U.S.C. § 101. CONCLUSION We reverse the Examiner’s decision rejecting claims 1–25 under 35 U.S.C. § 101. Appeal 2019-005711 Application 13/765,045 12 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–25 101 Subject Matter Eligibility 1–25 REVERSED Copy with citationCopy as parenthetical citation