Ex Parte Banerjee et al

Patent Trial and Appeal Board

Oct 31, 2017

13526905 (P.T.A.B. Oct. 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.
13/526,905 06/19/2012 Pradipta K. Banerjee IN920120062US1 5899
82553 7590
Walter W. Duft
P.O. Box 378
Clarence Center, NY 14032
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
wduft @ duftlawoffice. com
xbmufss@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRADIPTA K. BANERJEE, VAIDYANATHAN SRINIVASAN,
and VIJAY K. SUKTHANKAR
Appeal 2016-0050411
Application 13/526,9052
Technology Center 3600
Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 8, 9, 12—16, and 19—21 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 3, 2015) and Reply Brief (“Reply Br.,” filed Apr. 11, 2016), the
Examiner’s Answer (“Ans.,” mailed Feb. 12, 2016), and the Final Office
Action (“Final Act.,” mailed Mar. 3, 2015).
2 Appellants identify “International Business Machines Corporation” as the
real party in interest. App. Br. 2.
3 Claims 1—7, 10, 11, 17, and 18 have been canceled. Id. at 21—24 (Claims
App’x.).
Appeal 2016-005041
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ “disclosure relates to cloud-based computing systems.
More particularly, the disclosure concerns power management on cloud
server hosts running virtual machines on behalf of customers.” Spec. 11.
Claims 8 and 15 are the independent claims on appeal. Claim 8,
reproduced below, is illustrative of the claimed subject matter.
8. A system, comprising:
one or more processors;
a memory operatively coupled to said one or more
processors;
program instructions stored in said memory for
programming said one or more processors to perform
operations for fairly distributing power savings benefits to
virtual machines (VMs) provisioned to customers in a
computing cloud, said operations comprising:
provisioning one or more VMs on a target cloud host in
response to resource requests from one or more customer
devices;
monitoring host power savings on said target host;
using said host power savings as a variable component in
determining per-customer cloud usage for accounting purposes;
said host power savings being used to calculate metered
cost savings that are distributed proportionately to said VMs;
and
said metered cost savings being distributed to said VMs
based on VM size and utilization.
App. Br. 21, Claims App’x.
ANALYSIS
Under 35 U.S.C. § 101, 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 § 101
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to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82—84 (2012), “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 that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “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, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner maintains:
Here, the claims are directed to system and computer program
product comprising the steps of provisioning one or more
virtual machines, monitoring host power savings, using savings
as [a] variable [in] determining cloud usage that are calculated
to determine metered cost savings[,] and distributing the
savings. This is considered to be an abstract idea of calculating
cost savings to distribute to virtual machines based on
variables, because it [] amounts to nothing more than a
mathematical formula to distribute savings.
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Ans. 3. Proceeding to the second step, the Examiner determines that the
additional elements recited are generic computer components
performing functions similar to the computer functions
described in Alice Corp. as being well-understood, routine, and
conventional. More specifically, the recited elements[,] such as
[a] processor [and] memory[,] merely perform generic
fimctions[,] such as processing and calculating data. These
features are similar to computer operations^] such as “creating
and maintaining [] accounts,” “obtaining data,” “adjusting
account balances” and “issuing automated instructions,” which
the Court in Alice Corp. considered “purely conventional.”
Id. at 4.
Independent claim 8
Appellants initially contend that a prima facie case has not been
established because the Examiner does not adequately explain why the
subject matter of claim 8 is considered to be an abstract idea and why it
preempts such an idea. App. Br. 11. Appellants further contend that “the
Examiner has not cited any case law in which concepts similar to the alleged
abstract idea of applicants’ claims have been found to be abstract.” Reply
Br. 6—8 (citing the USPTO’s July 2015 Update: Subject Matter Eligibility,
Section III).
As to the question of establishing a prima facie case, the Federal
Circuit has made clear that “the 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)). 35 U.S.C. § 132 sets forth a general
notice requirement whereby the applicant is notified of the reasons for a
rejection together with such information as may be useful in judging the
propriety of continuing with prosecution of the application. See, e.g., In re
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Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In this case, the Examiner
provided adequate explanation to meet the notice requirement. The
Examiner set forth the statutory basis of the rejection, applied Alice’s two-
part framework, and sufficiently articulated reasoning in an informative
manner, thus, meeting the notice requirement of35U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when
a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.”). There is no
requirement for the Examiner to cite examples from PTO guidelines or any
additional case law to establish a prima facie case.
There also is no requirement under Alice for the Examiner to make an
explicit finding as to preemption. Although the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” see Alice Corp., 134 S. Ct. at 2354, characterizing pre-emption as
a driving concern for patent eligibility is not the same as characterizing pre­
emption as the sole test for patent eligibility. “The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability” and “[f]or this reason, questions on preemption are inherent
in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2354). Yet although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
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to price optimization in the e-commerce setting do not make them any less
abstract.”). Therefore, the Examiner properly established a prima facie case
of unpatentability, and the burden then shifted to Appellants to rebut the
prima facie case.
In the Reply Brief, Appellants contend that the change in the
Examiner’s characterization of the alleged abstract idea from the final
rejection is unfair and “warrants a remand back to the Examiner with an
order directing that prosecution be reopened for the purpose of entering a
new Office Action that allows Applicants to consider a full range of
available response options.” Reply Br. 5. But if Appellants genuinely
believed that the Answer improperly introduced a new ground of rejection,
Appellants had ample opportunity to raise this issue by filing a timely
petition under 37 C.F.R. § 1.181.4 Appellants instead chose to maintain the
appeal and provide arguments for review and consideration by the Board
responsive to the Examiner’s Answer by filing a Reply Brief under 37
C.F.R. § 41.41. Thus, Appellants cannot reasonably complain now that they
have been denied a fair opportunity to respond to the rejection.
Turning now to the merits under the first step of Alice, we must
evaluate “the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
4 Any request to seek review of the examiner’s failure to designate a
rejection as a new ground of rejection in an examiner’s answer must be by
way of a petition to the Director under 37 C.F.R. § 1.181 filed within two
months from the entry of the examiner’s answer and before the filing of any
reply brief. Failure of appellant to timely file such a petition will constitute
a waiver of any arguments that a rejection must be designated as a new
ground of rejection. See 37 C.F.R. § 41.40(a).
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subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
In that regard, Appellants’ Specification discloses that
power management features in cloud server host hardware and
subsequent exploitation at the operating system level enables
significant cost savings due to efficiently managing server
power consumption based on utilization. The lower the
utilization, the higher the power savings. For a data center
provider, cost savings due to power usage savings drive better
ROI (Return On Investment) for a virtualized or cloud scenario.
Currently, however, all such benefits are enjoyed by the
provider only. Customers typically pay a fixed charge to the
provider based on cloud resource usage. As far as known,
current systems do not pass on the benefits of low power usage
to the user.
Spec. 12. According to Appellants, the exclusive retention of such cost
savings by the provider without passing any benefit to customers is
disadvantageous because there is no motivation for customers “to select a
cloud provider with more power efficient hardware and software that would
contribute to reduction in energy utilization.” Id. The inventors solved this
problem by providing “a distribution mechanism to pass on the benefits
accruing from data center power savings to customers.” Id. 13.
In light of the Specification’s description of the problem and solution,
the advance over the prior art by the claimed invention is in providing an
incentive or motivation for a customer to choose an energy efficient
provider. Cost “savings are used as a variable component in determining
per-customer cloud usage for accounting purposes.” Id. 14. In other words,
Appellants’ alleged innovation lies in calculating and distributing to
customers proportional metered power cost savings “(e.g., a power savings
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credit).” Id. 127. The claimed invention is drawn to a system for “fairly
distributing power savings benefits to virtual machines (VMs) provisioned to
customers in a computing cloud,” or calculating and distributing a
proportional share of cost savings to a customer based on the customer’s
resource utilization. Offering an incentive in the form of a savings credit is
simply an age-old marketing ploy to entice a customer to enter into an
agreement with a provider—the determination of which involves a
mathematical formula/calculation, thus encompassing an abstract concept.5
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining claims directed to “the
mere formation and manipulation of economic relations” and “the
performance of certain financial transactions” have been held to involve
abstract ideas); see also
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. The Federal Circuit applied this
distinction in Enfish6 in rejecting a § 101 challenge at the step-one stage in
the Alice analysis because the claims at issue focused, not on asserted
advances in uses to which existing computer capabilities could be put, but on
a specific type of data structure, i.e., a self-referential table for a computer
database, designed to improve the way a computer carries out its basic
functions of storing and retrieving data. Id. at 1335—36. Unlike the claims
5 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction.”).
6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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found non-abstract in prior cases, the claims here use generic computer
technology to calculate metered cost savings, wherein each VM is allocated
a share of cost savings based on its size and utilization, and the claims do not
recite an improvement to a particular computer technology. See, e.g.,
McRO,1 837 F.3d at 1314—15 (finding claims not abstract because they
“focused on a specific asserted improvement in computer animation”). The
alleged advantages that Appellants tout do not concern an improvement to
computer capabilities, but instead relate to an alleged improvement in
customer acquisition by providing an incentive or motivation for a customer
to choose an energy efficient provider, for which a computer is used as a tool
in its ordinary capacity to calculate said incentive. Thus, we are not apprised
of error as to the Examiner’s determination of the abstract idea.
Appellants contend that even if the pending claims are directed to an
abstract idea, “the claims recite subject matter that improves the function of
a cloud computing environment by providing a novel solution to an
identified power consumption and energy usage problem.” App. Br. 13; see
also Reply Br. 10—11 (“these operations provide an improvement in the
operation of a cloud computing environment that addresses a problem of
minimizing power consumption and energy usage.”). We find Appellants’
contentions unpersuasive because, as discussed above, there is no inventive
concept or technological advance here that would support patent eligibility.
Claim 8 is not focused on an improvement to the claimed “one or more
processors.” Cf. In re TLI Communications LLC Patent Litigation, 823 F.3d
607, 613 (Fed. Cir. 2016) (The claims’ focus “was not on an improved
1 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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telephone unit or an improved server.”). And merely limiting the scope of
the claims to a particular technological environment or application, without
more, does not change the outcome.
It is well-established by now that the introduction of a generic
computer or computing environment into the claims does not alter the
analysis here because
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, 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. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice at 2358 (citations omitted). The relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea on a generic computer. Id. at 2359. We conclude that they do
not.
Instead, we agree with the Examiner that the claimed invention
merely requires generic computer implementation and fails to transform the
abstract idea into a patent eligible invention. The introduction of a
processor, memory, or virtual machines in a computing cloud environment
does not alter the analysis under the second step of Alice. See Alice, 134 S.
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Ct. at 2358; see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1324—25 (Fed. Cir. 2016) (explaining that “generic
computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . .
do not satisfy the inventive concept requirement” (citations omitted)).
The functions performed by the claimed system embody basic functions of a
computer that amount to nothing more than programming conventional
software or hardware to perform a mathematical operation. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d at 1363 (“relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible”); see also Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the specification, requires anything other than off-the-
shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information.”). Indeed,
Appellants’ Specification indicates that “[t]he processors 64 may comprise
general purpose processors.” Spec. 129; see also id. 1130-34.
Taking the claim elements separately, the function performed by the
computer in each li mitati on of the claimed system is purely conventional.
Using a processor and memory for storing data, receiving and processing
requests, and performing a calculation embodies some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, and conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions. Considered as an ordered
combination, the computer components of Appellants’ system add nothing
that is not already present when the limitations are considered separately.
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Contrary to Appellants’ arguments (Reply Br. 9—11), the recited claim
language is not sufficient to make the invention “rooted in computer
technology” like the claims in DDR Holdings8 or Research Corporation
Technologies.8 9 Cf. Intellectual Ventures ILLC v. Capital One Bank (USA),
792 F.3d 1363, 1371 (Fed. Cir. 2015) (“The patent claims here do not
address problems unique to the Internet, so DDR has no applicability.”). For
example, in DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host’s website after “clicking”
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The Federal Circuit, thus, held that the claims were directed to
statutory subject matter because they recite a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id. Unlike the situation in DDR
Holdings, Appellants do not identify any problem particular to computer
networks and/or the Internet that claim 8 allegedly overcomes.
Appellants’ reliance on the Research Corporation Technologies
decision is also misplaced. There, the court observed that the claimed
methods (i.e., claims 1 and 2 of US 5,111,310 and claim 11 of US
5,341,228) “address ‘a need in the art for . . . halftone rendering of gray
scale images in which a digital data processor is utiled in a simple and
8 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
9 Research Corporation Technologies, Inc. v. Microsoft Corporation, 627
F.3d 859 (Fed. Cir. 2010).
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precise manner to accomplish the halftone rendering.’” Research
Corporation Technologies, 627 F.3d at 868—69 (citations omitted). Even
though the claimed combination incorporated, in significant part, algorithms
and formulas that control the masks and half-toning, the court found that
“[t]he invention presents functional and palpable applications in the field of
computer technology.” Id. at 869. Here, no analogous improvements in the
field of computer technology is recited. Rather, the system claimed is
performing a business marketing scheme by employing a mathematical
operation that is implemented by a generic processor (claim 8). The
computer is used to perform a function commonly performed by generic
processors; that is, to conduct a “mathematical operation.” Cf. Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) (citing Gottschalkv. Benson, 409 U.S. 63, 67 (1972)) (a
computer is used “for its most basic function, the performance of repetitive
calculations”). Thus, in contrast to Research Corporation Technologies, the
instant claims describe purely conventional computing functions.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 8 under 35 U.S.C. § 101.
Dependent claims 9, 12, 13, and 14
We have considered Appellants’ contentions as to dependent claims 9,
12, 13, and 14, but we are not persuaded that these claims add anything
significantly more to transform the abstract idea. For example, claim 9
further identifies the host power savings as a variable component in a cloud
usage calculation result. Claims 12—14 describe the correlation between VM
size and utilization in calculating cost savings share for a given VM. In
other words, the dependent claims limit the scope of the abstract idea to
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which independent claim 8 is directed but its character remains unchanged,
especially given that these dependent claims provide no insight to
improvements in computer functionality beyond what one would expect
from using a generic computer as a tool in performing the scheme as
claimed.
Accordingly, we are not apprised of error, and, thus, we sustain the
rejection of claims 9, 12, 13, and 14.
Independent claim 15 and dependent claims 16 and 19—21
Appellants rely on arguments made with respect to claims 8, 9, and
12—14 in contesting the rejection of claims 15, 16, and 19—21. See App. Br.
20. Therefore, we sustain the rejection of claims 15, 16, and 19—21 for the
same reasons as claims 8, 9, and 12—14.
DECISION
The Examiner’s rejection under 35 U.S.C. § 101 is affirmed.
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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