Ex Parte Abhinkar

Patent Trials and Appeals Board

Apr 29, 2019

13992817 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/992,817 06/10/2013
47795 7590 05/01/2019
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2620
FIRST NAMED INVENTOR
Sameer Abhinkar
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
ITL.2584US (P40384) 2285
EXAMINER
LE, JESSICA N
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
05/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMBER ABHINKAR 1
Appeal2018-007662
Application 13/992,817
Technology Center 2100
Before JOHN A. EV ANS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-30, which constitute all pending claims. See
Non-Final Act. 1 and Appeal Br. 12-15 (Claims App'x). Because the
claims on appeal have been twice-rejected, we have jurisdiction under 35
U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994)
(precedential).
We affirm.
1 Appellant identifies Intel Corporation as the real party in interest. Appeal
Br. 3.
Appeal2018-007662
Application 13/992,817
Introduction
Appellant's invention relates to executing database queries based on
query semantics information. Spec. ,r,r 1, 6 ( explaining that for purposes of
this invention, "'query semantics information' or 'semantic information'
generally refer to data associated with a database query which may describe
or relate to time characteristics of the database query"). Claims 1, 13, and
21 are independent, of which claim 1 is exemplary:
1. A method comprising:
receiving a database query from a client computer;
accessing time sensitivity of the database query by
analyzing the query itself for time sensitivity information and
further by mining additional information not included in the
query from the client computer; and
selecting, based on the time sensitivity of the database
query, one of a plurality of database servers to execute the
database query.
Appeal Br. 12 (Claims App'x).
Re} ections and References
Claims 1-30 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Non-Final
Act. 3--4; see also Ans. 14--15.
Claims 1-30 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 4--6; see also Ans. 16-19.
Claims 1-22, 25-27, and 30 stand rejected as unpatentable under
35 U.S.C. § I03(a) over Burger et al. (US 8,280,869 Bl; Oct. 2, 2012)
("Burger") and Barsness et al. (US 2008/0133459 Al; June 5, 2008)
("Barsness"). Non-Final Act. 6-12; see also Ans. 19-21.
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Claims 23 and 24 stand rejected as unpatentable under 35 U.S.C.
§ I03(a) over Burger, Barsness, and Nevill-Manning (US 2004/0236739 Al;
Nov. 25, 2004). Non-Final Act. 12-13; see also Ans. 21-24.
Claims 28 and 29 stand rejected as unpatentable under 35 U.S.C.
§ I03(a) over Burger, Barsness, and Burger et al. (US 2010/0125565 Al;
May 20, 2010) ("Burger '565"). Non-Final Act. 13-14; see also Ans. 24--25.
ANALYSIS
A. The§ 112 Written Description Rejection
Compliance with the written description requirement is a question of
fact that is context sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ("[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology."). The test is whether the disclosure "conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Id. The Specification must adequately describe
the claimed subject matter, but "the exact terms need not be used in haec
verba." Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997).
The Examiner determines the Specification lacks written description
support for "mining additional information not included in the query from
the client computer," as recited. Non-Final Act. 4. Appellant argues the
Examiner errs because "the specification says that not only can you assess
the query itself, but you can also look at the user's calendar to obtain time
sensitivity information. . . . Assessing time sensitivity based on the user's
calendar clearly refers to additional information [ calendar entry] not
included in the query." Appeal. Br. 7 ( citing Spec. ,r 31) (brackets by
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Appellant). Appellant submits that "[t]he word 'mining' has its ordinary
meaning of extracting or obtaining. If you extract or obtain information
from the calendar you are mining information therefrom. The specification
clearly teaches that you 'obtain' information from outside the query its effect
as a basis for time sensitivity." Id. at 8 (citing Spec. ,r 14).
The Examiner responds that an ordinarily skilled artisan would
understand "mining additional information not included in the query from
the client computer" as being a "different algorithm" from examining a
user's calendar to obtain time sensitivity information. Ans. 15 ( also finding
the Specification's disclosure of a query optimizer that may "interact with
the user's calendar" does not support the disputed limitation).
We agree with Appellant the Examiner errs in the written description
rejection. The Specification's disclosure of obtaining query semantics
information from any location or source, such as a user's calendar, clearly
demonstrates Appellant was in possession of the limitation of "mining
additional information not included in the query from the client computer,"
as recited. See, e.g., Spec. ,r,r 13-15, 31. Original claim 8, which recites
"obtaining the query semantics information from at least one data source
external to the plurality of database servers," further demonstrates Appellant
was in possession of the disputed limitation. See Spec. ,r 11 ( original claim
8); Ariad Pharms. v. Eli Lilly, 598 F.3d at 1349 (explaining "original claims
are part of the original specification" (citing In re Gardner, 480 F.2d 879,
879 (CCPA 1973)).
Accordingly, we do not sustain the Examiner's rejection of claims 1-
30 under 35 U.S.C. § 112, first paragraph.
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B. The§ 1 OJ Rejection
1. Principles of Law
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, 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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal 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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50-57 (Jan. 7, 2019) ("2019 PEG"). Under the 2019 PEG, 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)). 2
See 2019 PEG at 52, 55-56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, does the
Office then look to whether the claim:
2 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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(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 2019 PEG at 56.
2. Analysis
Appellant argues claims 1-30 together as a group. See Appeal Br. 9-
10. We select claim 1 as representative. 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
Thus, for this rejection, all claims stand or fall with claim 1.
a. Alice/Mayo Step One, 2019 PEG Prong One
The Examiner determines claim 1 recites "receiving [a] client's
request/query, accessing time sensitivity based on analyzing the query and
mining additional information, and then selecting the database server
suitable for executing the client's query based on time sensitivity
information/additional information." Ans. 17; see also id. at 16-17; Non-
Final Act. 5. The Examiner concludes claim 1 is, thus, directed to an
abstract idea that is "a mental process (thinking) that 'can be performed in
the human mind, or by a human using a pen and paper."' Ans. 17 ( citing
MPEP § 2106.04(a)(2)(II}-(III)).
Appellant contends the claimed invention is patent eligible because it
"improves the ability of the processor-based system to determine the time
sensitivity of a database inquiry." Appeal Br. 9. In particular, Appellant
argues the claimed invention "can then use this determination of time
sensitivity to select one of a plurality of database servers to execute the
database query." Id. (citing Spec. ,r 6); see also Reply Br. 1-2.
Appellant's arguments are unpersuasive. Claim 1 recites
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receiving a [] query from a client [];
accessing time sensitivity of the [] query by analyzing the
query itself for time sensitivity information and further by
mining additional information not included in the query from
the client []; and
selecting, based on the time sensitivity of the[] query,
one of a plurality of[] servers to execute the [] query.
Thus, claim 1 recites selecting a server to respond to a request based on time
sensitivity, which is determined by analyzing the request along with mining
of additional information. This describes a routine method that humans use
for responding to a request based on time sensitivity. Although there is a
selection of a "server," a human can perform the functionality required of
the server. For example, the above limitations are similar to a traditional
interaction between a customer and a postal worker, where ( 1) the customer
requests that a package be shipped; (2) the postal worker asks the customer
when it needs to be delivered; (3) the customer responds; and ( 4) based on
the customer's request and answer, the postal worker suggests the best
service to ship the package.
Thus, claim 1 recites a patent-ineligible abstract idea in the category
of a mental process. Mayo, 566 U.S. at 71 ("Phenomena of nature, though
just discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work"
(quoting Gottschalkv. Benson, 409 U.S. at 63); see also CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011)
( concluding claims directed to "detecting credit card fraud based on
information relating to past transactions" can be performed in the human
mind and were drawn to a patent-ineligible mental process); FairWarning
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IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)
( concluding claims directed to "collecting and analyzing information to
detect misuse and notifying a user when misuse is detected" to be mental
processes within the abstract-idea category).
b. Alice/Mayo Step One, 2019 PEG Prong Two
Having determined that the claims recites a judicial exception, our
analysis under the 2019 PEG, we consider whether there are "additional
elements that integrate the exception into a practical application." See
MPEP § 2106.05(a}-(c), (e}-(h). The Examiner finds the additional
limitations recited in the independent claims, i.e., a computer and database
servers ( claims 1 and 13), and a "semantics module" and a "hardware
processor" ( claim 21 ), do not amount to significantly more than an abstract
idea. Non-Final Act. 5; Ans. 17-18. We agree.
Appellant's claimed invention does not change the way in which the
technology components recited in claim 1 or in the other independent claims
(such as the computer and database servers (claims 1 and 13), and a
"semantics module" and "hardware processor" ( claim 21)) perform their
tasks. Instead, as the Examiner finds, and we agree, the claims simply use
the generically recited technology components for their ordinary purposes to
carry out an abstract idea. Non-Final Act. 5; Ans. 17-18. For example,
claim 1 recites "receiving a database query from a client computer." This
seemingly technological step, however, is merely data gathering-i.e.,
extra-solution activity that does not confer patent eligibility to the claim.
See 2019 PEG at 55 n.31. Thus, claim 1 does not apply the judicial
exception with any particular machine. See MPEP § 2106.05(b ).
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Appellant's arguments similarly do not persuade us that claim 1
improves the functioning of a computer or any other technology or technical
field, or that it effects a particular transformation of the recited articles,
which are simply used for their ordinary purposes, or that it adds any other
meaningful (technological) limitations, i.e., limitations beyond simply
"linking the use" of the abstract idea to generic technology. See MPEP
§ 2106.0S(a), (c), (e}-(f); see also id. at (g}-(h) (use of well-known
limitations beyond the judicially excepted matter constitutes "insignificant
extra-solution activity" (g) and claim limitations "merely indicating a field
of use or technological environment in which to apply a judicial exception
do not amount to significantly more" (h)).
In particular, we are unpersuaded by Appellant's reliance on
paragraph 6 of the Specification to show that claim 1 improves the
functioning of a computer processor. Rather, as the Examiner finds, "the
'processor' is a well-known computing tool, which .... the instant claims
merely use ... to implement the abstract idea, as opposed to claiming a
process specifically designed to achieve an improved technological result in
conventional industry practice and/or automate existing conventional
methods of solving a problem." Ans. 18-19; see Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ("[T]he first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool.").
In the Reply Brief, Appellant argues a prima facie case under § 101
has not been made because "for the first time on appeal, the Examiner
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addresses the 'improves the operation of the processor test.'" Reply Br. 1.
To the extent Appellant argues the Examiner improperly introduced a new
ground of rejection in the Answer, this issue is addressable by petition to the
Director, not appeal to the Board. See 37 C.F.R. §§ 41.40(a), 1.181; MPEP
§ 1207 .03(b ). Moreover, Appellant waived this argument by failing to
petition the Director "within two months from the entry of the examiner's
answer and before the filing of any reply brief." 37 C.F.R. § 41.40(a). In
any event, Appellant's assertion is incorrect. The Examiner addressed this
issue in the Non-Final Office Action, finding that "the claims do not recite
... an improvement to the function of the computer itself." Non-Final
Act. 5. The Examiner's response in the Answer, explaining why the claims
do not improve the operation of the processor, is consistent with the
determination previously made in the rejection. See Ans. 18-19.
Claim 1 does not recite limitations that integrate the judicial exception
into a practical application.
c. Alice/Mayo Step Two
Next, we consider whether, beyond the judicial exception, claim 1
recites limitations, individually or in combination, that are not "well-
understood, routine, and conventional." See 2019 PEG at 56. The Examiner
finds the claims recite "well-understood, routine, conventional activities that
are merely automated by the use of a general purpose computer." Non-Final
Act. 5; Ans. 18. We agree.
Claim limitations for receiving, analyzing, and servicing a database
query from a client computer are tasks that well-known search engines have
performed for many years. "[S]earch engines, content-based filtering, and
collaborative filtering were all well-known in the art at the time of the
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claimed invention." See !IP Engine, Inc. v. AOL Inc., 576 F. App'x 982, 986
(Fed. Cir. 2014) (citing US Patent 6,314,420 Bl, col. 111. 20-45 (issued
Nov. 6, 2001) (disclosing that employing a search engine to search the
Internet and find information that matches a user's web-based query for
information was well-known in the computer software arts as of 2001).
With respect to the additional limitations of a "client computer,"
"database servers," "semantics module," and "hardware processor," the
Specification describes these elements in no more than generic and high-
level terms-
[ t ]he client computer ... may be any computing device such as
a personal computer (PC), a desktop computer, a laptop, a
tablet, a mainframe, a server, a telephone, a kiosk, a cable box,
a personal digital assistant (PDA), a mobile phone, a smart
phone, etc. (Spec. ,r 7);
each database server ... may be a computer server hosting a
database management system, and may be configured to receive
and process database queries .... [ and] may ... also include a
processor 132 and storage 134 (id. ,r,r 9, 11);
the semantics module ... may be implemented in hardware,
software, and/or firmware. In firmware and software
embodiments it may be implemented by computer executed
instructions stored in a non-transitory computer readable
medium, such as an optical, semiconductor, or magnetic storage
device (id. ,r 21 ); and
the processor ... may be any integrated circuit, processor,
microprocessor, core of a microprocessor, etc. (id. ,r 11 ).
Such generic recitations of computing elements fail to transform a
patent-ineligible concept into an eligible one. See Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)
(generic computer components, such as an "interface," "network," and
"database," fail to satisfy the inventive concept requirement; Alice, 573 U.S.
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at 226 at 2360 ("Nearly every computer will include a 'communications
controller' and a 'data storage unit' capable of performing the basic
calculation, storage, and transmission functions required by the method
claims.").
Appellant does not present any persuasive evidence that the recited
limitations of claim 1 go beyond that which is well-understood, routine, and
conventional. We note that novelty and non-obviousness are "of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter." Diehr, 450 U.S.
at 188-89. "It has been clear since Alice that a claimed invention's use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). A novel and nonobvious claim directed to an abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
For the reasons discussed above, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claims 1-30
under 35 U.S.C. § 101.
C. The§ 103(a) Rejections
Appellant argues Examiner error in the§ 103(a) rejection of the
independent claims based on claim 1. Appeal Br. 9-10. In particular,
Appellant argues the Examiner errs in finding Burger teaches or suggests
claim 1 's recitation of "accessing time sensitivity of the database query ...
further by mining additional information not included in the query from the
client computer" (hereafter, "the disputed limitation"). Appeal. Br. 9-10;
Reply Br. 3--4. Appellant's argument is persuasive.
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Burger relates to optimizing a database query by using intermediate
information developed in the course of other database queries. Burger 1 :5-
38. In Burger, a user submits an SQL (Structured Query Language) query,
the system evaluates and optimizes ("develops the least expensive plan to
perform the request and produces executable steps to execute the plan"). Id.
3:61--4:6 (quoting 4:2--4). In the course of optimizing and executing a
query, Burger generates intermediate information (referred to a "spool files"
or "spools") stored in a log file, which is available for reuse in optimizing
and executing subsequent queries. Id. 4:32-5:10, Fig. 4.
The Examiner finds Burger's disclosure of using intermediate spool
information from a prior query in the course of optimizing a current query
teaches "mining additional information not included in the query from the
client computer," as recited in the disputed limitation. Non-Final Act. 7
(citing Burger 4:46--49, 8:57----67, Fig. 4); see also Ans. 20-21 (citing Burger
4:56----64, Fig. 4, item 430). Appellant contends the Examiner errs because
Burger's obtaining ("mining") of intermediate information for previous
queries does not teach or suggest the disputed limitation's recitation of
"accessing the time sensitivity of the [current] query ... by mining
additional information." Reply Br. 3 ( citing Burger 4:44--48, 8:57----67).
Appellant's argument is persuasive because, although Burger teaches
mining intermediate information that is "additional information not included
in the query," the Examiner does not explain (and we do not discern) how or
why the intermediate information from prior queries contains information
for use in "accessing time sensitivity of the [current] query," as the disputed
limitation requires. In other words, the Examiner does not sufficiently
articulate how or why Burger's reuse of intermediate information from a
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prior query teaches ( or suggests) "accessing time sensitivity of the [ current]
query ... by mining additional information," as recited in the disputed
limitation.
Accordingly, because there is no determination in the record that the
other cited prior art cures the foregoing deficiency, we do not sustain the
§ 103(a) rejection of claim 1. We likewise do not sustain the§ 103(a)
rejections of independent claims 13 and 21, each of which recites a similar
limitation, and claims 2-12, 14--20, and 22-30, which depend therefrom.
DECISION
We affirm the rejection of claims 1-30 under 35 U.S.C. § 101.
We reverse the rejection of claims 1-30 under 35 U.S.C. § 103(a).
We reverse the rejection of claims 1-30 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Because we affirm at least one ground of rejection with respect to each claim
on appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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