Ex Parte Arquie et al

Patent Trial and Appeal Board

Oct 17, 2018

14479304 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/479,304 09/06/2014
153509 7590 10/19/2018
Broadcom
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Louis M. Arquie
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.
112-03 l?USC 1 1067
EXAMINER
TRAN, TUYETLIEN T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
acollins@blankrome.com
houstonpatents@blankrome.com
klutsch@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS M. ARQUIE, DAVID B. HAMILTON
and MARK R. LUBECK
Appeal2018-000858
Application 14/479,304
Technology Center 2100
Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-27, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Brocade Communications
Systems, Inc. App. Br. 3.
Appeal2018-000858
Application 14/479,304
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention relates generally to
methods and systems for monitoring data storage networks." Spec. ,r 2. 2
The Specification explains that "[t]he method includes identifying a
topology map for a storage network and gathering operating information,
which is processed to determine a performance parameter, such as
utilization," and "[a] performance monitoring display is generated including
a topology map and a graphical representation of the performance
parameter." Id. Abstract. The Specification also explains that utilization "is
typically determined by comparing the throughput capacity of a device or
data path with the actual or measured throughput at a particular time, e.g.,
1.5 gigabits per second measured throughput in a 2 gigabit per second fiber
is 75 percent utilization." Id. ,r 6.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A computer-based method comprising:
generating a performance monitoring display output
signal;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed September 6, 2014; "Final Act." for the Final Office
Action, mailed September 19, 2016; "App. Br." for the Appeal Brief, filed
May 5, 2017; "Ans." for the Examiner's Answer, mailed September 5, 2017;
and "Reply Br." for the Reply Brief, filed November 2, 2017.
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displaying at least a portion of a topology map of a
network and a graphical representation of a performance
parameter of the network based on the performance monitoring
display output signal,
wherein the graphical representation of the performance
parameter is displayed by moving elements,
wherein the performance parameter represents utilization
of a data throughput capacity of a data connection,
wherein the graphical representation includes a double
line, each of the lines being solid when there is no utilization
and replaced by parallel broken lines comprising dashes
separated by a distance when there is a level of utilization, and
wherein the dashes are the moving elements and the
dashes in one of the parallel broken lines moves [sic] in a first
direction and the dashes in the other one of the parallel broken
lines moves [sic] in a second direction opposite of the first
direction to represent two channel data flow.
App. Br. 27 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Iwamura
Glaser
Olson
Germain et al. ("Germain")
Anderson et al. ("Anderson")
us 5,883,621
us 5,889,520
US 6,381,036 Bl
US 2003/0020764 Al
US 2003/0191608 Al
The Rejections on Appeal
Mar. 16, 1999
Mar. 30, 1999
Apr. 30, 2002
Jan.30,2003
Oct. 9, 2003
Claims 1-27 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2--4.
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Claims 1-3, 5-7, 10-12, 14, 15, 19, and 21-27 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Germain and Iwamura. Final
Act. 6-14.
Claims 4, 8, 9, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Germain, Iwamura, and Glaser. Final Act. 14--15.
Claims 13, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Germain, I wamura, and Anderson. Final Act. 15-17.
Claims 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Germain, Iwamura, and Olson. Final Act. 17-18.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner's conclusions concerning ineligibility under§ 101 and
unpatentability under§ 103(a). We adopt the Examiner's findings and
reasoning in the Final Office Action (Final Act. 2--4, 6-21) and Answer
(Ans. 3-16). We add the following to address and emphasize specific
findings and arguments.
The§ 101 Rejection of Claims 1-27
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever 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. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
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Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, "determine whether the claims at issue are directed to" a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec.
Power, 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
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Under step two, "an inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
A PRIMA F ACIE CASE OF INELIGIBILITY
Appellants contend that a May 2016 PTO guidance memorandum
regarding § 101 rejections states that an "Office Action should set forth why
a claim that recites an abstract idea corresponds to 'a concept that the courts
have identified as an abstract idea."' App. Br. 16 ( emphasis omitted).
Appellants then assert that the Examiner "fail[ s] to provide sufficient factual
analysis as to how the claimed subject matter corresponds to 'a concept that
the courts have identified as an abstract idea."' Id. Appellants also assert
that the Examiner's analysis under the Mayo/Alice analytical framework "is
incomplete," e.g., because the Examiner "fails to cite any court decision or
provide any other type of support on how the claimed subject matter
corresponds to an abstract idea." Id. at 16-17.
Appellants' arguments do not persuade us of Examiner error. A May
2016 Federal Register notice explains that the PTO's § 101 guidance
materials "were developed as a matter of internal Office management," "do
not constitute substantive rulemaking," "do not have the force and effect of
law," and instead "set out examination policy" regarding § 101 rejections.
81 Fed. Reg. 27,381, 27,382 (May 6, 2016). That notice also explains that
"[r]ejections will continue to be based upon the substantive law, and it is
these rejections that are appealable." Id. Thus, an Examiner's failure to
follow the § 101 guidance materials is appealable only to the extent there has
been a failure follow statutory or decisional law. If the guidance materials
exceed statutory or decisional law with additional restrictions, an
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Examiner's failure to comply with those additional restrictions may warrant
a petition to the Director.
We conclude that the Final Office Action adequately explains the
§ 101 rejection. "[T]he prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The "PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies" § 132 "in
'notify[ing] the applicant ... [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application."' In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alterations in original) (quoting 35 U.S.C. § 132). The PTO violates§ 132
"when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection." Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). But if the PTO "adequately
explain[ s] the shortcomings it perceives ... the burden shifts to the applicant
to rebut the prima facie case with evidence and/or argument." Hyatt,
492 F.3d at 1370.
Here, for Mayo/Alice step one, the Examiner determines that the
claims are directed to an abstract idea, e.g., "generating a performance
monitoring display output signal; [and] displaying at least a portion of a
topology map of a network and a graphical representation of a performance
parameter of the network based on the performance monitoring display
output signal." Final Act. 2--4, 19; see Ans. 4, 6. The Examiner explains
that the claimed steps "are similar to the steps identified as abstract ideas by
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the courts," e.g., in Internet Patents Corp. v. Active Network, Inc., 790 F .3d
1343 (Fed. Cir. 2015), and SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014). Final Act. 3, 19; see
Ans. 4, 6, 8, 10-11. Thus, the Examiner (1) identifies the applicable judicial
exception as an abstract idea rather than a natural phenomenon or law of
nature, (2) defines the abstract idea, and (3) cites court decisions to support
the analysis.
Further, for Mayo/Alice step two, the Examiner finds that the claimed
computer components "perform purely generic computer functions." Final
Act. 3--4; see Ans. 11-12. The Examiner determines that "the additional
elements when considered both individually and as a combination do not
amount to significantly more than the abstract idea of displaying data."
Final Act. 3, 19; see Ans. 4--5, 8, 11. Accordingly, the Examiner reasons
that the claims lack an "inventive concept" sufficient to transform them into
significantly more than a patent-ineligible abstract idea. Final Act. 3--4, 19;
see Ans. 10-12.
The Examiner's statements satisfy§ 132 because they apply the
Mayo/Alice analytical framework and apprise Appellants of the reasons for
the § 101 rejection under that framework. As discussed in more detail
below, Appellants recognize the Examiner's Mayo/Alice analysis and
present arguments regarding the merits of that analysis. See App. Br. 9-15.
Appellants do not respond by alleging a failure to understand the rejection.
Id. at 9-17.
MAYO/ALICE STEP ONE
Appellants state that claim 1 "is representative of' the other claims for
the§ 101 analysis. Reply Br. 3; see App. Br. 11. Appellants assert that the
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claims "are not directed to an abstract idea, but rather an 'improvement in
computer-related technology' pertaining to network performance
monitoring." App. Br. 10; see Reply Br. 4. In particular, Appellants
contend that "the claimed subject matter improves network performance
monitoring" because it "provides a specific technique in informing a
network administrator of possible underutilization and/ or overutilization" by
"utilizing different graphical features" to "monitor different utilization
ranges." App. Br. 10-11. Appellants also contend that "the claimed
invention identifies a particular tool for presenting graphical data." Id. at 12;
see id. at 13; Reply Br. 4.
Appellants' arguments do not persuade us of Examiner error. The
claims involve the same general steps of collecting, organizing, and
presenting information as the claims in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). See Ans. 5---6. In Electric
Power, the patents in suit "describe[ d] and claim[ ed] systems and methods
for performing real-time performance monitoring of an electric power grid
by collecting data from multiple data sources, analyzing the data, and
displaying the results." Elec. Power, 830 F.3d at 1351. Representative
claim 12 of U.S. Patent No. 8,401,710 recited:
A method of detecting events on an interconnected
electric power grid in real time over a wide area and
automatically analyzing the events on the interconnected
electric power grid, the method comprising:
receiving a plurality of data streams, each of the data
streams comprising sub-second, time stamped synchronized
phasor measurements wherein the measurements in each stream
are collected in real time at geographically distinct points over
the wide area of the interconnected electric power grid, the
wide area comprising at least two elements from among control
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areas, transmission companies, utilities, regional reliability
coordinators, and reliability jurisdictions;
receiving data from other power system data sources, the
other power system data sources comprising at least one of
transmission maps, power plant locations, EMS/SCADA
systems;
receiving data from a plurality of non-grid data sources;
detecting and analyzing events in real-time from the
plurality of data streams from the wide area based on at least
one of limits, sensitivities and rates of change for one or more
measurements from the data streams and dynamic stability
metrics derived from analysis of the measurements from the
data streams including at least one of frequency instability,
voltages, power flows, phase angles, damping, and oscillation
modes, derived from the phasor measurements and the other
power system data sources in which the metrics are indicative
of events, grid stress, and/or grid instability, over the wide area;
displaying the event analysis results and diagnoses of
events and associated ones of the metrics from different
categories of data and the derived metrics in visuals, tables,
charts, or combinations thereof, the data comprising at least one
of monitoring data, tracking data, historical data, prediction
data, and summary data;
displaying concurrent visualization of measurements
from the data streams and the dynamic stability metrics directed
to the wide area of the interconnected electric power grid;
accumulating and updating the measurements from the
data streams and the dynamic stability metrics, grid data, and
non-grid data in real time as to wide area and local area portions
of the interconnected electric power grid; and
deriving a composite indicator of reliability that is an
indicator of power grid vulnerability and is derived from a
combination of one or more real time measurements or
computations of measurements from the data streams and the
dynamic stability metrics covering the wide area as well as non-
power grid data received from the non-grid data source.
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Id. at 1351-52. The Federal Circuit considered the "focus" of the claims and
their "character as a whole" and decided that they were directed to an
abstract idea. Id. at 1353-54.
There are no meaningful differences between the claims in Electric
Power and the claims here. Ans. 5---6. The claims in Electric Power
concerned performance monitoring of an electric power grid with an
allegedly improved information arrangement for monitoring. Elec. Power,
830 F.3d at 1351-52; U.S. Patent No. 8,401,710, Figs. 17-27. The claims
here concern performance monitoring of a computer network with an
allegedly improved information arrangement for monitoring. App. Br.
10-11, 27-33 (Claims App.); Spec. ,r,r 2, 10-14, 24, 40-46, Abstract,
Figs. 4--7.
Appellants seek to distinguish the claims in Electric Power by
asserting that the claims here specify more "details on how to display"
information. Reply Br. 7-8. In Electric Power, however, claim 17
depended from claim 12 and specified more "details on how to display"
information than claim 12. U.S. Patent No. 8,401,710, col. 32 11. 31-34.
The Federal Circuit decided that claim 17 was directed to an abstract idea.
Elec. Power, 830 F.3d at 1351 n.1, 1353-54. "[A] claim is not patent
eligible merely because it applies an abstract idea in a narrow way." BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018).
Further, the claims here resemble the claims in Move, Inc. v. Real
Estate Alliance Ltd., 721 F. App'x 950 (Fed. Cir. 2018). There, the claims
covered a "method of searching for real estate properties geographically on a
computer" including steps for displaying a map, zooming in on a selected
area of the map, and displaying geographic locations for available real estate
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properties in the selected area. Id. at 952-53. Because the claims in Move
"involve[ d] the same general steps of collecting, organizing, and presenting
information" as the claims in Electric Power, the Federal Circuit decided
that the claims were directed to an abstract idea. Id. at 954--56. There are no
meaningful differences between the claims in Move and the claims here.
Based onMcRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016), Appellants contend that "the claimed subject matter is
able to perform a function not previously performable by a computer," i.e.,
displaying "a graphical representation includ[ing] both connectivity
information and network performance information." App. Br. 10-11; see
Reply Br. 8. Appellants misplace their reliance on McRO. The claims in
McRO--unlike the claims here-recited a "specific ... improvement in
computer animation" using "unconventional rules" that related
"sub-sequences of phonemes, timings, and morph weight sets" to
automatically animate lip synchronization and facial expressions for three-
dimensional characters that only human animators could previously produce.
McRO, 837 F.3d at 1302---03, 1307---08, 1313-15.
The claims here do not recite "unconventional rules" for achieving a
result that only humans could previously produce. Steps for replacing solid
lines with dashed lines and moving dashed lines in opposite directions do
not correspond to the "unconventional rules" discussed in McRO. See App.
Br. 27-33 (Claims App.). Further, Iwamura explains that "programming
techniques well known in the art" can generate signal-flow representations
for a display, such as animated arrows moving in opposite directions.
Iwamura 8:57---65, Fig. 12. Thus, those "programming techniques well
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known in the art" can produce software for replacing solid lines with dashed
lines and moving dashed lines in opposite directions.
In McRO, "the incorporation of the claimed rules" improved an
existing technological process. McRO, 837 F.3d at 1314. In contrast to the
claims in McRO, the claims here do not improve an existing technological
process. See Alice, 134 S. Ct. at 2358 (explaining that "the claims in Diehr
were patent eligible because they improved an existing technological
process"). Instead, the claims cover an allegedly improved information
arrangement for monitoring a computer network. App. Br. 10-11, 27-33
(Claims App.); Spec. ,r,r 2, 10-14, 24, 40-46, Abstract, Figs. 4--7.
In addition, Appellants' contention that displaying a graphical
representation including both connectivity information and network
performance information was not "previously performable by a computer"
disregards Germain's disclosure. Germain describes and depicts graphical
representations including both connectivity information and network
performance information. Germain ,r,r 34--41, 46, 56-59, Figs. 4--5, 12-14.
Appellants assert that the claims "specify an unconventional display
format used to display network performance information." App. Br. 13.
Appellants also assert that "[ d]isplaying network performance information
using unconventional graphical features allows the presentation of large
amounts of network information in a timely and user-friendly manner."
Reply Br. 4. But "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). Similarly, a claim for a beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
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1379--80 (Fed. Cir. 2015). Thus, Appellants' assertions do not persuade us
of Examiner error.
Appellants contend that the Examiner "incorrectly simplifies" the
claims "to a gist or a core principal [sic] of displaying data" and the
Examiner's "oversimplification ... fails to comply with" a November 2016
PTO guidance memorandum regarding§ 101 rejections. Reply Br. 3--4. We
disagree.
As discussed above, the Examiner determines that the claims are
directed to "generating a performance monitoring display output signal;
[and] displaying at least a portion of a topology map of a network and a
graphical representation of a performance parameter of the network based on
the performance monitoring display output signal." Final Act. 2--4, 19;
Ans. 4, 6; see Reply Br. 3. Thus, the Examiner accurately assesses the
"focus" of the claims and their "character as a whole." See Elec. Power,
830 F.3d at 1353.
The claims are not directed to an improvement in computer
functionality. See Ans. 5. They specify no technical details concerning
a "monitor" or display, a "processor," or a "memory." App. Br. 27-33
(Claims App.). They do not pass muster under Mayo/Alice step one.
MAYO/ALICE STEP Two
Appellants assert that "the claims recite significantly more than an
abstract idea" because they "provide additional steps that create a
specifically programmed electronic device" and "go beyond the mere
concept of performing generic computer functions." App. Br. 14.
Appellants' assertion does not persuade us of Examiner error. In Alice,
"[ a ]11 of the claims [ we ]re implemented using a computer," and the resulting
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"specifically programmed electronic device" failed to suffice for patent
eligibility. Alice, 134 S. Ct. at 2353, 2358---60.
As additional elements, the claims recite a "monitor" or display,
a "processor," and a "memory." App. Br. 27-33 (Claims App.). The
Specification describes those computer components generically. See, e.g.,
Spec. ,r,r 25-28. For example, the Specification explains that an
administrator node for performance monitoring "may be any computer
device useful for running software applications including personal
computing devices such as desktops, laptops, notebooks, and even handheld
devices that communicate with a wired and/or wireless communication
network." Id. ,r 25. Also, the Specification states:
To practice the invention, the computer and network devices
may be any devices useful for providing the described
functions, including well-known data processing and
communication devices and systems, such as application,
database, and web servers, mainframes, personal computers and
computing devices ( and, in some cases, even mobile computing
and electronic devices) with processing, memory, and
input/output components, and server devices configured to
maintain and then transmit digital data over a communications
network.
Id. The Specification does not describe an unconventional arrangement of
any conventional computer components. See, e.g., Spec. ,r,r 25-28.
"[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice,
134 S. Ct. at 2358. Here, the generic computer components recited in the
claims "perform purely generic computer functions." Final Act. 3--4;
Ans. 11-12. Thus, they do not transform the patent-ineligible abstract idea
into a patent-eligible invention.
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In addition, court decisions have recognized that generic computer
components operating to collect, manipulate, and display data are well
understood, routine, and conventional to a skilled artisan. See, e.g., Alice,
134 S. Ct. at 2360; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1164---65
& n.1, 1170 (Fed. Cir. 2018); Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318-20 (Fed. Cir. 2016); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014); Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App'x 988, 993 (Fed. Cir. 2014).
Appellants assert that "the additional steps" in the claims "taken as a
whole, amount to significantly more than the mere recitation of generic
computer functions" because they "provide unconventional steps in
monitoring network performance." App. Br. 15. Appellants also assert that
the claimed solution "differs from the solution disclosed in" Germain. Id.
Appellants' assertions do not persuade us of Examiner error. "The
search for a § 101 inventive concept is ... distinct from demonstrating § 102
novelty." Synopsys, 839 F.3d at 1151; see Diehr, 450 U.S. at 188-89; Two-
Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); Intellectual Ventures, 838 F.3d at 1315 (same for
obviousness).
Appellants contend that the claims are similar to the patent-eligible
claim in the PTO' s abstract idea Example 21 concerning the transmission of
stock quote data. See App. Br. 14--15; PTO July 2015 Update Appendix 1:
Examples ("July 2015 Update"). We disagree.
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Example 21 's patent-eligible claim "addresses the Internet-centric
challenge of alerting a subscriber with time sensitive information when the
subscriber's computer is offline" by "transmitting the alert over a wireless
communication channel to activate the stock viewer application, which
causes the alert to display and enables the connection of the remote
subscriber computer to the data source over the Internet when the remote
subscriber computer comes online." July 2015 Update 4. In contrast to
Example 21 's patent-eligible claim, the claims here do not require activating
an application that causes an alert to display or enabling a remote
connection. Instead, they cover an allegedly improved information
arrangement for monitoring a computer network. App. Br. 10-11, 27-33
(Claims App.); Spec. ,r,r 2, 10-14, 24, 40-46, Abstract, Figs. 4--7.
Moreover, Appellants' contention that the claims are similar to
Example 21 's patent-eligible claim undermines the argument that the claims
are not directed to an abstract idea. Example 21 's patent-eligible claim "is
directed to an abstract idea." July 2015 Update 4. That claim satisfies
Mayo/Alice step two because the "limitations, when taken as an ordered
combination, provide unconventional steps that confine the abstract idea to a
particular useful application." Id. at 4--5.
SUMMARY
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claims 1-27.
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Appeal2018-000858
Application 14/479,304
The§ 103(a) Rejection of Claims 1-3, 5-7, 10-12, 14, 15, 19, and 21-27
THE INDEPENDENT CLAIMS: DASHED LINES
REPLACING SOLID LINES FOR REPRESENTING UTILIZATION
Appellants contend that "the combination of Germain and I wamura
fails to disclose" the following limitation in claim 1 and similar limitations
in independent claims 7, 15, 21, 24, and 27: "the graphical representation
includes a double line, each of the lines being solid when there is no
utilization and replaced by parallel broken lines comprising dashes separated
by a distance when there is a level of utilization." App. Br. 18-20, 25.
Specifically, Appellants assert that the solid lines in Germain Figure 12 "do
not represent that there is no utilization on the network" but instead
"represent the links between network nodes (i.e. connectivity
information) and do not indicate network utilization information or even
more generally network performance information." Id. at 19-20. According
to Appellants, Germain Figure 12 "shows the network topology before the
software disclosed in Germain has actually been used to analyze the
network's data performance," while Germain Figure 13 "shows what the
network would look like after the network analysis software has been run."
Id. at 19.
Appellants' arguments do not persuade us of Examiner error because
they disregard Germain Figure 4. Figure 4 shows a "graphical
representation of the topology of a network." Germain ,r 36, Fig. 4; see id.
,r 12; Final Act. 7; Ans. 12. Figure 4's graphical representation includes
symbols representing devices and parallel solid lines representing links or
connections between devices. Germain ,r 36, Fig. 4; see Final Act. 7, 20;
Ans. 12-13. The sizes, thicknesses, and/or colors of the symbols and lines
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Application 14/479,304
reflect performance parameters, such as capacity, throughput, or utilization.
Germain ,r,r 35--41, 46, Figs. 4--5; see Final Act. 7, 20; Ans. 12-13. For
instance, a size or thickness increase reflects a performance parameter
increase. Germain ,r,r 3 6--41, 46, Figs. 4--5. Thus, Germain teaches or
suggests relatively narrow or thin parallel solid lines when there is no
utilization and increasingly wider or thicker lines as utilization increases.
See Germain ,r,r 36--41, 46, Figs. 4--5; Final Act. 7, 20; Ans. 12-13. The
representations for utilization may indicate whether a link is "near
saturation" or instead "not overloaded." Germain ,r 59, Fig. 14. In addition,
Germain discloses dashed lines and arrows as representations for
performance information. Id. ,r 46 (table).
THE INDEPENDENT CLAIMS: DASHED LINES
MOVING IN OPPOSITE DIRECTIONS
Appellants contend that "the combination of Germain and I wamura
fails to disclose" the following limitation in claim 1 and similar limitations
in independent claims 7, 15, 21, 24, and 27: "the dashes are the moving
elements and the dashes in one of the parallel broken lines moves [sic] in a
first direction and the dashes in the other one of the parallel broken lines
moves [sic] in a second direction opposite of the first direction to represent
two channel data flow." App. Br. 18, 20-22, 25. Specifically, Appellants
assert that "the independent claims differ from I wamura" because "[ t ]he
solid lines [in Iwamura] are never replaced by broken lines and/or dashes
in I wamura." Id. at 21. Appellants also assert that "the independent claims
only have one line for each direction, that one line having moving segments,
while I wamura shows three lines for data flow in two directions on the same
portion, a solid line and the two lines of animated arrows." Id. at 22.
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Application 14/479,304
Appellants' arguments do not persuade us of Examiner error. The
independent claims use the transitional term "comprising" and, therefore,
"do[] not exclude unrecited elements." See Regeneron Pharm., Inc. v.
Merus N. V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent
Examining Procedure § 2111.03).
Moreover, Appellants' arguments attack the references individually,
while the Examiner relies on the combined disclosures in Germain and
Iwamura for the disputed limitation. See Final Act. 7-8, 20-21; Ans. 14--15.
Where a rejection rests on the combined disclosures in the references,
Appellants cannot establish nonobviousness by attacking the references
individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the combined disclosures in Germain and I wamura teach or suggest
the disputed limitation. See Final Act. 7-8, 20-21; Ans. 14--15.
Appellants assert that "I wamura fails to disclose the ' ... dashes are the
moving elements ... ' subject matter." App. Br. 22. But Iwamura discloses
that "[ s ]ignal flows are indicated with arrows" that "can be animated."
Iwamura 8:59---62, Fig. 12; see Final Act. 7-8, 20; Ans. 13-14. Thus,
I wamura teaches or suggests that "dashes are the moving elements." See
Final Act. 7-8, 20; Ans. 13-14.
Appellants contend that "Iwamura actually teaches away from
animating the connection lines by showing the additional lines of animated
arrows." App. Br. 22. "A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
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Appeal2018-000858
Application 14/479,304
1201 (Fed. Cir. 2004)). Here, Iwamura does not "criticize, discredit, or
otherwise discourage" animating Germain's connection lines by showing
moving arrows. See Iwamura 8:57-9: 12, Figs. 12-13; see also Germain
,r,r 5, 12, 17-19, 35--41, 46, 57-59, Figs. 4--5, 12-14.
THE INDEPENDENT CLAIMS: ALLEGED IMPROPER RELIANCE
ON THE KNOWLEDGE OF AN 0RDINARIL Y SKILLED ARTISAN
Appellants argue that the Examiner erred in rejecting the independent
claims for obviousness because the Examiner improperly relied on the
knowledge of an ordinarily skilled artisan to "make up for" claim limitations
"not expressly taught in Germain and Iwamura." App. Br. 23-24. We
disagree. Germain and I wamura collectively disclose each feature recited in
the independent claims, and their combined disclosures teach or suggest the
disputed limitations for the reasons discussed above. See Final Act. 6-8,
20-21; Ans. 12-16; Germain ,r,r 5, 12, 17-19, 35--41, 46, 57-59, Figs. 4--5,
12-14; Iwamura 8:57-9:12, Figs. 12-13.
SUMMARY FOR THE INDEPENDENT CLAIMS
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting the independent claims
under§ 103(a). Hence, we sustain the§ 103(a) rejection of the independent
claims.
DEPENDENT CLAIMS 2, 3, 5, 6, 10-12, 14, 19, 22, 23, 25, AND 26
Appellants do not argue patentability separately for dependent
claims 2, 3, 5, 6, 10-12, 14, 19, 22, 23, 25, and 26. App. Br. 25. Thus, we
sustain the§ 103(a) rejection of these dependent claims for the same reasons
as the independent claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/479,304
The§ 103(a) Rejections of Claims 4, 8, 9, 13, 16-18, and 20
For dependent claims 4, 8, 9, 13, 16-18, and 20, Appellants assert that
the additionally cited references fail to "teach, describe or fairly suggest the
subject matter that the combination of Germain and Iwamura is alleged to
teach," and thus the additionally cited references fail to "support the
obviousness rejection." App. Br. 25-26. Those assertions do not constitute
separate patentability arguments. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (explaining that the applicable rules "require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art"). Because Appellants do not argue the claims
separately, we sustain the§ 103(a) rejections of dependent claims 4, 8, 9, 13,
16-18, and 20 for the same reasons as the independent claims. See
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 1-27.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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