Ex Parte Bakshi et al

Patent Trial and Appeal Board

Mar 4, 2016

12339650 (P.T.A.B. Mar. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/339,650 12/19/2008
83719 7590 03/04/2016
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
YuryBAKSHI
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.
2008-1061 (40147/10301) 7605
EXAMINER
BOKHARI, SYED M
ART UNIT PAPER NUMBER
2473
MAILDATE DELIVERY MODE
03/04/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YURY BAKSHI, CAROLYN ROCHE JOHNSON,
and HERBERT SHULMAN1
Appeal2014-002508
Application 12/339,650
Technology Center 2400
Before BRUCE R. WINSOR, HUNG H. BUI, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and issue a new ground of rejection pursuant to our
authority under the provisions of 3 7 C.F .R. § 41. 50(b ).
1 Appellants identify AT&T Intellectual Property I, L.P ., as the real party in
interest. (App. Br. 2.)
Appeal2014-002508
Application 12/339,650
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A non-transitory computer readable storage medium
including a set of instructions executable by a processor, the
instructions, when executed by the processor, causing the
processor to perform operations comprising:
assigning a unique identifier to each of a plurality of node
subsets of a network, the node subsets being created by damage
to the network;
assigning one of the unique identifiers of the node subsets
to each of a plurality of components of the damaged network
based on a connectivity to one of the node subsets and
corresponding unique identifiers of the node subsets;
assigning one of the unique identifiers of the node subsets
to a node type of the plurality of components by assigning the
node type all of the unique identifiers of any of the components
of the node type; and
evaluating a first connectivity between a first one of the
components and a second one of the components by determining
whether they share one of the unique identifiers.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chu et al.
Zabihi et al.
Wijnands et al
J etcheva et al.
Saleh et al.
US 2006/0268742 Al
US 2007/0078970 Al
US 2007/0177525 Al
US 2008/0151916 Al
US 7,724,655 B2
2
Nov. 30, 2006
Apr. 5, 2007
Aug.2,2007
June 26, 2008
May 25, 2010
Appeal2014-002508
Application 12/339,650
REJECTIONS
(1) Claims 1and11 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Zabihi and Jetcheva. (Final Act. 3-9.)
(2) Claims 2-3, 7, 9-10, 12-13, 17, 19, and 20 stand rejected under
35 U.S.C § 103(a) as being unpatentable over Zabihi, Jetcheva, and
Wijnands. (Final Act. 9-13.)
(3) Claims 4---6 and 14--16 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Zabihi, Jetcheva, and Saleh. (Final Act. 13-16.)
(4) Claims 8-18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Zabihi, Jetcheva, and Chu. (Final Act. 16-18.)
ISSUE2
Whether the Examiner erred in finding the combination of Zabihi and
J etcheva teaches or suggests
assigning one of the unique identifiers of the node subsets
to each of a plurality of components of the damaged network
based on a connectivity to one of the node subsets and
corresponding unique identifiers of the node subsets; [and]
assigning one of the unique identifiers of the node subsets
to a node type of the plurality of components by assigning the
node type all of the unique identifiers of any of the components
of the node type
as recited in independent claim 1 and commensurately recited in
independent claim 11?
2 Appellants' contentions present additional issues. Because the identified
issue is dispositive of Appellants' arguments on appeal, we do not reach the
additional issues.
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Appeal2014-002508
Application 12/339,650
ANALYSIS
In support of the obviousness rejection of claim 1, the Examiner finds
Zabihi teaches or suggests "assigning one of the unique identifiers of the
node subsets to each of a plurality of components of the damaged network
based on a connectivity to one of the node subsets and corresponding unique
identifiers of the node subsets." (Final Act. 3--4; Ans. 18-19.) In particular,
the Examiner finds:
Zabihi discloses that the assigning one of the unique identifiers
of the node subsets to each of a plurality of components of the
damaged network based on connectivity to one of the node
subsets and corresponding unique identifiers of the node subsets.
The assignment of unique identifiers (colors) to the node subsets
is based on the connectivity to the node subset (i.e. red color, if
connection is completely down; yellow color, if connection is
partially operative and green color, if connection is fully
operative[)].
(Ans. 18-19.) In support of this finding, the Examiner relies on Zabihi' s
teaching a visual representation of the status of network components;
wherein "fully operational" components "could be shown in green," whereas
the color yellow could be used "to indicate that the service is operating but
not in a normal condition," and the color red could be used to illustrate a
service affected by a fault. (Zabihi i-fi-1241-242; see Ans. 19.)
Appellants argue the Examiner's findings are in error because:
[T]he colors (or other identifiers) of Zabihi are not assigned
based on connectivity in any sense. For example, various fully
operational components of the network of Zabihi may all be
assigned the same identifier (e.g., the color green) to designate
their operational status, but this designation does not necessarily
indicate that these components are connected to one another,
simply that they are operational. (See id., i-fi-1 [0241]-[0243],
passim.) In contrast, in the method performed by claim 1, all
network components that are assigned the same one of the
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Appeal2014-002508
Application 12/339,650
identifiers (e.g., red, yellow, green, etc.) have connectivity with
one another; that is, all components that have been assigned the
identifier "green" have connectivity with one another, all
components that have been assigned the identifier "red" have
connectivity with one another, etc. The Examiner's assertion that
"all components of same tier will have one of the colors" is also
incorrect; Zabihi discloses that components in the same tier are
shown having the same Y coordinate in a tree view of the
network. (See id., i-f [0240], Fig. 10.) However, nowhere does
Zabihi disclose that all components in the same tier are assigned
the same color (i.e., identifier), or that they are grouped based on
connectivity. (See id., i-fi-1 [0240]-[0243], passim.)
(Reply Br. 5 (emphases added).)
For the reasons argued by Appellants, we are persuaded the
Examiner's findings are in error. We, therefore, do not sustain the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1 or
independent claim 11, which contains limitations commensurate with claim
1. We also do not sustain the Examiner's rejections of dependent claims 2-
10 and 12-20; which stand with their respective independent claims.
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b): claims 1-20 are rejected under 35 U.S.C. § 101.
Section 101 of the Patent Act permits the patenting of "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 3 5 U.S. C. § 101. Yet, despite this broad
language, the Supreme Court has "long held that this provision contains an
important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (internal citations omitted).
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Application 12/339,650
The Supreme Court has set forth a two-part test "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
134 S. Ct. at 2355. The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
For example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and, mathematical formulas or relationships. Id. at 2355-57.
If the claims are directed to a patent-ineligible concept, the second
step is to consider the elements of the claims "individually and 'as an
ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1297-98 (2012)). 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).
Applying the first step of the analysis, we first note claim 1 is directed
to a "non-transitory computer readable storage medium including a set of
instructions executable by a processor, the instructions, when executed by
the processor, causing the processor to perform operations comprising,"
followed by a recitation of steps. (Claims App.) Claim 11 is directed to a
"system" comprising "a memory including a representation of a plurality of
network components and a set of instructions" and "a processor executing
the set of instructions to perform operations comprising," followed by a
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recitation of steps substantially similar to those recited in claim 1. (Claims
App.) Apart from the conventional memory, processor, and/or computer-
readable medium elements, however, claims 1 and 11 are directed to merely
"assigning" identifiers to network components based on certain criteria and
"evaluating" network connectivity by comparing the identifiers.
Because we find claims 1 and 11 to be directed to an abstract idea, we
must determine whether the claims as a whole-including all elements or
combination of elements-are directed to significantly more than the
abstract idea itself, i.e., to a patent-eligible application of the abstract idea.
See Alice, 134 S. Ct. at 2355. In that regard, the Federal Circuit has
recognized that, while the "machine-or-transformation" test is not the sole
test governing section 101 analyses, as set forth in Bilski, that test can
provide a "useful clue" in the second step of the Alice framework. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), cert.
denied, 135 S. Ct. 2907 (2015). A claimed process can be patent-eligible
under section 101 if "(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing." Id. (citing
In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), ajf'd on other grounds,
Bilski v. Kappas, 561 U.S. 593 (2010)).
As discussed above, the only elements of claims 1 and 11 that are not
directed to the abstract idea of "assigning" identifiers to network
components based on certain criteria and "evaluating" connectivity of
network components by "determining" whether they share common assigned
identifiers are the "non-transitory computer readable storage medium" and
"processor" recited in claim 1, and the "memory" and "processor" recited in
claim 11. The recitation of such generic computer components, which are
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needed to implement the abstract idea recited in claims 1 and 11 on a
computer system, is insufficient to transform the otherwise patent-ineligible
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2358
(holding "if a patent's recitation of a computer amounts to a mere instruction
to 'implemen[t]' an abstract idea 'on ... a computer,' that addition cannot
impart patent eligibility") (citation omitted). Moreover, although the
"assigning" and "evaluating" steps are to be performed with regard to "node
subsets of a network," the claims do not affirmatively recite the network
itself nor do they require any actual monitoring or manipulation of the
network components.
Based on the foregoing, we conclude claims 1 and 11 do not amount
to significantly more than the recited abstract idea, and are not patent
eligible. We further find dependent claims 2-10 and 12-20 do not add
anything to render their scope significantly more than the patent-ineligible
concept recited in independent claims 1 and 11. For example, claims 2 and
12 only further confirm the abstract nature of the claims by reciting that the
"damage scenario" recited in claims 1 and 11 "is one of existing and
hypothetical"-an alternative recitation meaning the claims read on a
"hypothetical" damage scenario. (Claims App. (emphases added).) And
although claims 3 and 13 provide additional details regarding the type of
network components that may be "assign[ ed]" identifiers and "evaluat[ ed]"
for connectivity, these claims also do not affirmatively recite these network
components as part of the claimed "computer readable storage medium" or
"system," as recited in independent claims 1 and 11, respectively. Simply
limiting abstract mental steps to a particular technological environment (i.e.,
certain types of computer networks) does not change a patent-ineligible
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concept into an inventive one. See Bilski v. Kappas, 561 U.S. 593, 610
(2010) ("[T]he prohibition against patenting abstract ideas cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment ... " (citation and internal quotation marks
omitted)).
We, therefore, issue a new ground of rejection of claims 1-20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejection of
claims 1-20 is reversed.
We enter a NEW GROUND OF REJECTION of claims 1-20 under
35 U.S.C. § 101 pursuant to our authority under 37 C.F.R. § 41.50(b ).
Section 41.50(b) of 37 C.F.R. provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be remanded
to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
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Application 12/339,650
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).
REVERSED
37 C.F.R. § 41.50(b)
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