Ex Parte Ashmore et al

Patent Trial and Appeal Board

Aug 31, 2017

13732651 (P.T.A.B. Aug. 31, 2017)

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.
13/732,651 01/02/2013 David A. Ashmore END920120241US1 6626
87334 7590
IBM END IPLAW (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
09/05/2017 EXAMINER
JONES, HUGH M
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
uspto@garglaw.com
dpandy a @ garglaw. com
garglaw @gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. ASHMORE, ANN M. MOYER,
NIRMALA SHOBITHA NANDI, and JOHN ZUPET
Appeal 2017-005707
Application 13/732,6511
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5—11, and 15—19, which are all of the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is IBM Corp. Br. 2.
2 Claims 2—4, 12—14, and 20 have been cancelled. Id. at 4.
Appeal 2017-005707
Application 13/732,651
INVENTION
Appellants’ claimed invention relates to a method, system, and
computer program product for source record management for estimating the
time needed to model a data processing environment. Spec. 11.
Claim 1 is representative of the subject matter on appeal and reads as
follows:
1. A method for estimating an amount of time to model a
data processing environment, the method comprising:
invoking, from an analysis tool using one or more
processors, a monitoring function in a component of the data
processing environment, wherein the component participates in
a migration operation in the data processing environment;
generating from the analysis tool, using the one or more
processors, a set of analysis parameters corresponding to the
component, wherein the set of analysis parameters are usable to
configure a model of the data processing environment from
which a set of relationships of the component are determined
for the migration operation;
computing, using the one or more processors, a sum of a
subset of the set of analysis parameters;
computing, using the one or more processors, a
logarithmic value of the sum;
weighting, using the one or more processors, the
logarithmic value;
computing, using the one or more processors, a second
sum of a second subset of the set of analysis parameters;
computing, using the one or more processors, a second
logarithmic value of the second sum, wherein the logarithmic
value and the second logarithmic value are each computed
using different bases, and wherein the logarithmic value is in
Base 10 and the second logarithmic value is in Base 5;
combining, using the one or more processors, the
logarithmic value with the second logarithmic value, wherein
the logarithmic value and the second logarithmic value are
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Application 13/732,651
representative of an amount of rework to create the model from
an existing model of the data processing environment; and
estimating, using the one or more processors, from the
amount of rework, the amount of time to model the data
processing environment using the logarithmic value.
REJECTION
The Examiner rejects claims 1, 5—11, and 15—19 under 35 U.S.C.
§ 101 as directed to a patent-ineligble abstract idea. Final Act. 2.
ANALYSIS
The Examiner allowed claims 1, 5—11, and 15—19 over the prior art of
record. Final Act. 4. The Examiner, however, concluded the claims are
directed to unpatentable subject matter because they are “drawn to
implementing abstract ideas on a generic computer performing generic
computer functions to carry out previously well-understood, routine, and
conventional activities known to the industry.” Id. at 2. Specifically, the
Examiner found claim 1 is directed to “calculating summation of
logarithms,” which amounts to the abstract concept of organizing
information through mathematical operations. See id. The Examiner also
found claim 1 does not include additional elements sufficient to amount to
significantly more than the abstract idea. Id. at 2—3. The Examiner further
noted:
[i]t is unclear what is being modeled; whether the claims are
drawn to modeling system hardware architecture itself, any
process/algorithm running on the CPU. The "time to model"
could be related to the computer architecture or a process being
implemented on the computer. It is unknown what constitutes
the analysis parameters.
Id. at 2.
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Appeal 2017-005707
Application 13/732,651
Appellants contend the Examiner erred in interpreting claim 1 (Final
Act. 4) because the Examiner’s interpretation “has no basis or support in the
specification of the present application.” Br. 8—9. In particular, Appellants
argue the Examiner’s interpretation “fails to have any resemblance at all to
the expressly recited methodology for estimating the modeling time and
does not even estimate a time at all.” Id. at 9 (citing Spec. Fig. 4D,
11 67-84).
Appellants’ arguments are not persuasive of error. “Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We decline to import the
cited methodology from the Specification into claim 1, as Appellants urge.
Moreover, to the extent Appellants argue the Examiner’s claim
interpretation is relevant to the Examiner’s rejection of claim 1 under § 101,
Appellants have not persuasively explained how adopting Appellants’
proposed interpretation would render claim 1 patent eligible. Thus, on this
record, we are not persuaded the Examiner’s claim interpretation is overly
broad or unreasonable.3
Appellants present several arguments directed to the Examiner’s
rejection of representative claim 1 under § 101. Br. 9—16. First, Appellants
argue the Examiner erred in concluding (Final Act. 4) the limitation “usable
to configure a model of the data processing environment from which a set of
3 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Application 13/732,651
relationships of the component are determined for the migration operation”
is not entitled to patentable weight. Br. 10-11. Appellants argue that
“[participation in the migration operation” is not an intended use of the
component, “but a positively recited structural limitation, which
distinguishes the component from other components in the data processing
environment.” Id. at 11.
Appellants further contend the Examiner’s finding that claim 1 is
directed to an abstract idea is conclusory. Id. at 12.
Appellants also argue that claim 1 does not recite a mathematical
algorithm, but is rooted in computer technology to overcome a problem in
migration operations within data processing environments. Id. at 16.
We do not find Appellants’ arguments persuasive. The Supreme
Court has long held that “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.”A/z'ce Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category
embodies the longstanding rule that an idea, by itself, is not patentable.
Alice Corp., 134 S. Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63,
67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289 (2012)). The first step in the analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” such as an abstract idea. Id. (citing Mayo, 132 S. Ct. at 1296—97.
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If the claims are directed to a patent-ineligible concept, the second step in
the analysis is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second
step is to “search for an ‘inventive concept’—i.e., an element or combination
of elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition
against patenting an abstract idea “‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191—92 (1981)).
Applying the first step of the Alice framework, we agree with the
Examiner that claim 1 is directed to an abstract idea of organizing
information through mathematical operations. See Ans. 2. In particular, the
steps recited in claim 1—including, for example, the “computing,”
“weighting,” “combining,” and “estimating” steps—are directed to
mathematical operations. We also agree with the Examiner that claim 1
recites generic “components” and “analysis parameters” used to configure “a
model of the data processing environment.” Id. at 2—3. Thus, we find
claim 1 is similar to the claims the Federal Circuit determined were patent
ineligible in Digitech Image Technologies, LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014).
Appellants’ argument that the limitation “a component of the data
processing environment, wherein the component participates in a migration
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Application 13/732,651
operation in the data processing environment” is “a positively recited
structural limitation, which distinguishes the component from other
components in the data processing environment” (Br. 10—11) does not
persuade us that the Examiner erred. The Examiner concluded the
component that participates in the migration operation broadly encompasses
hardware, software or firmware or a combination. Ans. 5. Appellants have
presented insufficient persuasive argument or objective evidence to show
that the Examiner’s interpretation is overly broad, unreasonable, or
inconsistent with the Specification. See n.3, supra.
The Federal Circuit has held “[wjithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.”
Digitech, 758 F.3d at 1351. Specific operations using specific data does not
render a mathematical relationship patentable subject matter. Parker v.
Flook, 437 U.S. 584, 595 (1978) (“If a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is
for a specific purpose, the claimed method is nonstatutory.” (quoting In re
Richman, 563 F.2d 1026, 1030 (1977)); Elec. Power Grp. LLC v. Alstom SA,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (stating that the “particular content” of
data “does not change its character as information”).
Appellants have not specifically identified any recited elements and
the impact of those elements on the analysis of whether the claim is directed
to an abstract idea. Thus, we agree with the Examiner that claim 1 is
directed to an abstract concept of organizing information through
mathematical operations and is, therefore, directed to an abstract idea.
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Application 13/732,651
Turning to the second step of the Alice analysis, we find nothing in
claim 1 that adds anything “significantly more” to transform the abstract
concept of organizing information through mathematical operations into a
patent-eligible application. Alice, 134 S. Ct. at 2357. None of Appellants’
arguments persuade us that some inventive concept arises from the ordered
combination of these steps, which are ordinary steps in data analysis and are
recited in an ordinary order. Claim 1 simply incorporates a general-purpose
computer and generic components such as processors to perform generic
computer functions, i.e., generating analysis parameters, computing,
weighting, estimating, in a “data processing environment,” which is not
enough to transform an abstract idea into a patent-eligible invention.
Claim 1 does not purport to improve the functioning of the computer system
itself. Nor does it effect an improvement in any other technology or
technical field. Instead, claim 1 amounts to nothing significantly more than
a computational method of estimating an amount of time to model a data
processing environment through the abstract idea of “computing” using
generic processors and components.
In contrast to claims the Federal Circuit held are directed to specific
improvements in computer capabilities and, thus, patent-eligible subject
matter, claim 1 neither is rooted in computer technology nor seeks to
improve any type of computer capabilities. See DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016). Instead, Appellants’ claim 1 simply
recites an abstract concept of organizing information through mathematical
operations.
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Application 13/732,651
Because Appellants’ claim 1 is directed to a patent-ineligible abstract
concept and does not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s 35 U.S.C. § 101
rejection of representative claim 1, as well as the 35 U.S.C. § 101 rejection
of grouped claims 5—11 and 15—19, not argued separately. See Br. 9; see
also 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1, 5—11,
and 15—19.
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. § 41.50(f).
AFFIRMED
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