Ex Parte Barak et al

Patent Trial and Appeal Board

Oct 31, 2018

13406036 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/406,036 02/27/2012
105727 7590 11/02/2018
Pillsbury Winthrop Shaw Pittman LLP (CA, Inc.)
PO Box 10500
McLean, VA 22102
NirBarak
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.
072962-0396103 1213
EXAMINER
CHOO, JOHANN Y
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
Docket_IP@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIR BARAK and EITAN HADAR
Appeal2017-004940
Application 13/406,036 1
Technology Center 3600
Before JASON V. MORGAN, ERIC B. CHEN, and SHARON PENICK,
Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Invention
Appellants disclose a method that
includes monitoring a usage of a leased image provided by a
cloud vendor, by a client computing device. A threshold period
1 Appellants identify CA, Inc., as the real party in interest. Appeal Br. 2
(herein, citations to "Appeal Br." refer to the Appeal Brief filed April 19,
2016).
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Application 13/406,036
of time associated with the usage is determined. Whether an
access to the leased image should be terminated based upon an
expiry of the threshold period of time or based upon a request
received from the client computing device is determined.
Abstract. "These images are essentially virtual machines that provide
various applications or services to the customer." Spec. ,r 4.
Exemplary Claims (key limitations emphasized)
1. A method to secure a virtual machine operating in a cloud
computing environment provided by a cloud vendor, the method
compnsmg:
monitoring, by a computer system, a usage of the virtual
machine operating in the cloud computing environment, by a
client computing device;
determining, by the computer system, whether an access to the
virtual machine should be terminated based upon an expiry of a
threshold period of time associated with the usage or based
upon a request received from the client computing device;
locking the virtual machine, by the computer system, based
upon the determining whether the access to the virtual machine
should be terminated;
monitoring, by the computer system, an access request received
for the locked virtual machine; and
enabling, by the computer system, access to the locked virtual
machine when it is determined that the access request is valid.
5. The method of claim 1 further comprising:
billing the client computing device for a total usage time
defined as a time period for which the virtual machine is not
dormant and unlocked.
9. The method of claim 1 further comprising:
generating a status report comprising information related to an
active virtual machine associated with the client computing
device, a locked virtual machine associated with the client
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computing device, and for each one of the active and locked
virtual machines, a period of time for which the active virtual
machine and the locked virtual machine have been used by the
client computing device, and whether or not another client
computing device attempted to activate the locked virtual
machine.
Rejections
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4--5.
The Examiner rejects claims 5, 9, 14, and 18 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 5-6.
The Examiner rejects claims 1-3, 5, 6, 8, 10-12, 14, 15, 17, and 19
under 35 U.S.C. § I03(a) as being unpatentable over Huang et al. (US 2012/
0060031 Al; published Mar. 8, 2012) ("Huang"), Dhoolia et al. (US 2013/
0124353 Al; published May 16, 2013) ("Dhoolia"), and Ayala et al. (US
2012/0042061 Al; published Feb. 16, 2012) ("Ayala"). Final Act. 7-15.
The Examiner rejects claims 4 and 13 under 35 U.S.C. § I03(a) as
being unpatentable over Huang, Dhoolia, Ayala, and Garibay et al. (US
2004/0249762 Al; published Dec. 9, 2004) ("Garibay"). Final Act. 15-16.
The Examiner rejects claims 7 and 16 under 35 U.S.C. § I03(a) as
being unpatentable over Huang, Dhoolia, Ayala, and Oida et al. (US 2011/
0154448 Al; published June 23, 2011) ("Oida"). Final Act. 16-17.
The Examiner rejects claims 9 and 18 under 35 U.S.C. § I03(a) as
being unpatentable over Huang, Dhoolia, Ayala, and Ginter et al. (US
5,892,900; issued Apr. 6, 1999) ("Ginter"). Final Act. 18-20.
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ADOPTION OF EXAMINER'S FINDINGS AND CONCLUSIONS
Other than with respect to the Examiner's rejections of claims 9 and
18 under 35 U.S.C. § 112, second paragraph, and claims 1-20 under
35 U.S.C. § 103(a), we agree with and adopt as our own the Examiner's
findings of facts as set forth in the Answer and in the Action from which this
appeal was taken, and concur in the Examiner's conclusions based thereon.
To this extent, we have considered Appellants' arguments, but do not find
them persuasive of error. We provide the following explanation for
emphasis.
35 U.S.C. § 101
Examiner's Determinations and Appellants' Contentions
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines "the claims are directed to certain method
of processing information/transactions through a clearing house, comparing
information with old information, and blocking/allowing access." Final
Act. 4. The Examiner further determines the additional elements of claim 1
"amount to no more than: (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry." Id. at
4--5.
Appellants contend the Examiner erred because "there is no difference
in principle between the present claims and a method, system, etc. claim
directed to access control to a building. Surely no Court would consider a
claim directed to, e.g., a method of operating a door lock as being directed to
an abstract idea." Appeal Br. 6. Appellants argue "the Examiner has not
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identified a proper legally recognized abstract idea" (id. at 7; see also Reply
Br. 3-6) because, among other things, Appellants contend claim 1 does "not
preempt an abstract idea" (Appeal Br. 7; see also Reply Br. 7-8), the
Examiner's articulation of the abstract idea omits various elements of
claim 1 (Appeal Br. 11 ), claim 1 is "not directed to subject matter
historically performed as a mental process" (id. at 12), and "the Examiner
has not identified any legal decision identifying [the articulated abstract
idea] as a legally recognized abstract idea" (id. at 14; see also Reply Br.
8-11).
Appellants argue claim 1 has recitations that make it significantly
more than the purportedly abstract idea articulated by the Examiner. In
particular, Appellants argue claim 1 is "directed to a practical and very
concrete method for controlling access to a physical thing, namely a virtual
machine operating in a cloud computing environment" (Appeal Br. 16) and
that claim 1 is tied to a specific machine because it is "limited to an
apparatus and 'real world' machines" (id. at 17). See also Reply Br. 5---6,
11-13.
Appellants also argue the Examiner erred by failing to provide
"analysis in the Office Action with respect to any of the dependent claims,
let alone each and all of their features." Appeal Br. 21; see also Reply Br.
13-14.
Analysis
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
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in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions "from those that claim patent-
eligible applications of those concepts." Id. ( citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if so, then determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the patent-
ineligible concept itself. See Alice, 134 S. Ct. at 2355.
"[ A ]t present there is no such single, succinct, usable definition or
test" for what an "abstract idea" encompasses. Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016), cert. denied,
138 S. Ct. 469 (2017). Therefore, the conclusion that a claim is abstract
often turns on the examination of "earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs, 841 F.3d at 1294 (citing Elec. Power Grp.,
830 F.3d 1350, 1353-54 (Fed. Cir. 2016)).
"[ A ]11 inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. We, therefore, look to whether: ( 1) the claims focus on a specific
means or method that improves the relevant technology or (2) the claims are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
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If a claim proves to be unpatentable as a result of the two-part
analysis, no additional determination regarding preemption is necessary.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility," as
"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) (internal quotation marks and citation omitted).
Step 1
We agree with the Examiner that that claim 1, being directed to a
method of controlling access to a virtual machine, is directed to a patent-
ineligible abstract idea. See Ans. 2-3. Appellants argue the Examiner erred
because the claimed method is comparable to a "claim directed to access
control to a building." Appeal Br. 6. Appellants further argue "the
Examiner has not identified a proper legally recognized abstract idea" (id. at
7) and, in particular, "the Examiner has not identified any legal decision
identifying [the articulated abstract idea] as a legally recognized abstract
idea" (id. at 14).
We determine, however, that the subject matter of claim 1 is similar to
the "abstract idea of 'providing restricted access to resources.'" Prism
Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1017 (Fed. Cir.
2017) (non-precedential), cert. denied, 138 S. Ct. 689 (2018). Importantly,
the Specification provides ample evidence that the claimed virtual machine
represents an access-controlled resource. See, e.g., Spec. ,r,r 24 ("'Images'
... are defined as representations of virtual machines that run, provide, or
support one or more services (e.g., applications or other resources)").
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Here it is not dispositive whether claim 1 is "directed to subject matter
historically performed as a mental process." Appeal Br. 12. The method for
controlling access in Prism Techs. related "control[ling] access to protected
computer resources by authenticating identity data, i.e., unique identifying
information of computer components." Prism Techs., 696 F. App'x at 1016
(emphases added) (citing Gregg et al., U.S. 8,127,345 B2, col. 1, 1. 60-col.
2, 1. 24 (issued Feb. 28, 2012)). Despite being directed to a method related
to computer resources and computer components, rather than a mental
process, the claimed method in Prism Techs. was abstract. See Prism
Techs., 696 F. App'x at 1017.
For these reasons, we agree with the Examiner that claim 1 is directed
to an abstract idea.
Step 2
We also agree with the Examiner that the additional recitations of
claim 1 do not make it significantly more than the underlying abstract idea.
See Final Act. 4--5. Appellants argue claim 1 is "directed to a practical and
very concrete method for controlling access to a physical thing, namely f!
virtual machine operating in a cloud computing environment." Appeal
Br. 16; see also Reply Br. 5---6, 11-13. Appellants' argument, however, fails
to show that claim 1 improves the relevant technology rather than merely
invoking generic processes and machinery. See Enfish, 822 F.3d at
1335-36.
The Specification describes virtual machines as including or being
supported by generic "hardware computing devices having an operating
system, disk drives, interfaces/ports, memory, buses, cooling sub-systems,
and various software stored therein on tangible computer readable media."
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Spec. ,r 14. The Specification further describes "images" and "image
bundles" generically as "representations of virtual machines that run,
provide, or support, one or more services ( e.g., applications or other
resources)." Id. at ,r 24.
In light of these disclosures, claim 1 fails to recite anything beyond
generic computer technology recitations. Mere programming of generic
computer technologies is insufficient to make a claim more than an
underlying abstract idea. See Alice, 134 S. Ct. at 2357 ("method claims,
which merely require generic computer implementation, fail to transform
[an] abstract idea into a patent-eligible invention").
For these reasons, we agree with the Examiner that claim 1 is directed
to patent-ineligible subject matter. Accordingly, we sustain the Examiner's
35 U.S.C. § 101 rejection of claim 1, and claims 10 and 19, which
Appellants do not argue separately.
Dependent Claims
Appellants also argue the Examiner erred by failing to provide
"analysis in the Office Action with respect to any of the dependent claims,
let alone each and all of their features." Appeal Br. 21. However,
Appellants do not show that any of the additional recitations of the
dependent claims make any of the dependent claims significantly more than
the underlying abstract idea. See also Ans. 5.
Accordingly, we also sustain the Examiner's 35 U.S.C. § 101
rejection of claims 2-9, 11-18, and 20.
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35 U.S.C. § 112, SECOND PARAGRAPH, CLAIMS 5 AND 14
Examiner's Determinations and Appellants' Contentions
In rejecting claim 5 as being indefinite, the Examiner determines the
recitation "the virtual machine is not dormant and unlocked" is unclear.
Final Act. 6. Specifically, the Examiner determines it is unclear "if the
negative connotation of 'not' i[s] directed towards only [to] the 'dormant' or
to both 'dormant' and 'unlocked' and therefore, the claim language could be
interpreted as not dormant and not unlocked or it could be interpreted as
being not dormant and being unlocked." Ans. 5.
Appellants contend the Examiner erred because "it is not apparent
how a person of ordinary skill in the art would read claim[] 5 ... to say 'not
dormant and not unlocked."' Appeal Br. 22. Appellants argue "a person of
ordinary skill in the art reading claim[] 5 ... would understand it to mean
that the virtual machine is not dormant and is unlocked." Id.; see also Reply
Br. 14--15.
Analysis
We agree with the Examiner that claim 5 is ambiguous. See Ans. 5.
The recitation "a total usage time defined as a time period for which the
virtual machine is not dormant and unlocked'' ( emphasis added) can refer to
either: ( 1) a time period for which the virtual machine is not dormant and is
not unlocked or (2) a time period for which the virtual machine is not
dormant and is unlocked. See id. Appellants argue that if claim 5 was
intended to encompass the first interpretation claim 5 "would have read, e.g.,
'locked and not dormant."' Reply Br. 5. Purportedly unambiguous
alternatives to the disputed recitation, however, fail to show that the disputed
recitation in its current form is also unambiguous. "[D]uring patent
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prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed." In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1990). Because the disputed recitation
has multiple reasonable interpretations, claim 5 is indefinite.
Accordingly, we sustain the Examiner's 35 U.S.C. § 112, second
paragraph, rejection of claim 5, and claim 14, which Appellants do not argue
separately. Appeal Br. 22.
35 U.S.C. § 112, SECOND PARAGRAPH, CLAIMS 9 AND 18
Examiner's Determinations and Appellants' Contentions
In rejecting claim 9 as being indefinite, the Examiner determines "[i]t
is unclear as to if the [ claimed] report is for either an active machine, a
locked virtual machine, a period of time, a determination of another client
device, or any combination of these or each one separately." Final Act. 6.
The Examiner notes claim 9 "separates the limitation with 'and for each of
the active and locked virtual machines, a period of time for the active
machine and the locked virtual machine have been used by the client
computing device' when the limitation initially started with 'comprising
information related to an active virtual machine."' Ans. 6. Thus, the
Examiner determines "it is unclear if the virtual machine is split into two
virtual machines or if the status report is no longer merely to one virtual
machine" and "if the 'period of time' is designated the active virtual
machine initially referenced or to 'each one of the active and locked virtual
machines' as later referenced." Ans. 6.
Appellants contend the Examiner erred because claim 9 sets forth a
"comma separated list of items separated by 'and"' and lacks an "'or'
separating the list of items." Appeal Br. 23. Specifically, Appellants argue:
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A person of ordinary skill in the art would understand that
claim[] 9 ... refer[ s] to a status report comprising (a)
information regarding an active virtual machine associated with
the client computing device, and regarding a locked virtual
machine associated with the client computing device, and for
each one of the active and locked virtual machines, (b)
information regarding a period of time for which the active
virtual machine and the locked virtual machine have been used
by the client computing device, and ( c) information regarding
whether or not another client computing device attempted to
activate the locked virtual machine.
Reply Br. 15.
Analysis
Appellants emphasize claim 9 uses "and" multiple times, but never
"or." See Appeal Br. 23. This use of "and" multiple times, however, creates
the potential for ambiguity because "and" is typically included only once
before the last element of the list or (more rarely) between every element of
the list.
Appellants posit one interpretation of claim 9 in which, with several
changes, there are three parts of the claimed report. See Reply Br. 15
(adding part identifiers (a}-(c); moving "and" from the boundary of parts (a)
and (b) to the middle of part (a); and inserting "information regarding" two
additional times at the beginning of parts (b) and ( c) ). An artisan of ordinary
skill----considering the ordinary use of "and" before the last element of a
list----could also have interpreted claim 9 to include two parts and three sub-
parts:
9. The method of claim 1 further comprising:
generating a status report comprising ( 1) information related to
(I.a) an active virtual machine associated with the client
computing device, ( 1. b) a locked virtual machine associated
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with the client computing device, and (l.c) for each one of the
active and locked virtual machines, a period of time for which
the active virtual machine and the locked virtual machine have
been used by the client computing device, and (2) whether or
not another client computing device attempted to activate the
locked virtual machine.
(part identifiers (1 }-(2) and sub-part identifiers (1.a}-(1.c) added). This
reasonable alternative interpretation only introduces part identifiers, rather
than inserting or moving recitations, and makes the use of "and" multiple
times less confusing.
Although flowing more naturally from the text of claim 9 than what
Appellants proffer, this interpretation is substantively indistinguishable from
Appellants' proffered interpretation. See Reply Br. 15. In particular, under
either interpretation the status report comprises information related both to
an active virtual machine and to a locked virtual machine. Thus, the
Examiner erred in interpreting the status report information as potentially
being limited "to one virtual machine, as denoted at the beginning of the
limitation." Ans. 6. The Examiner provides no other basis for determining
that claim 9 is indefinite. Therefore, despite the potential for ambiguity
introduced by Appellants' repeated use of "and" in a potentially confusing
manner, we agree with Appellants that the Examiner erred in rejecting claim
9 as indefinite.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112,
second paragraph, rejection of claim 9, and claim 18, which contains similar
recitations and is similarly rejected.
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35 U.S.C. § 103(A)
Examiner's Determinations and Appellants' Contentions
In rejecting claim 1 as obvious, the Examiner finds that Huang teaches
or suggests most of the recitations of claim 1. Final Act. 7-9. In particular,
the Examiner relies on Huang's licensing of video content for "a rental
period, a subscription period, and/or a preview period .... [for] a quantity of
times that the transcoded video content has been processed and/or played
.... [ or for] a trial period" (Huang ,r 68) to teach or suggest determining an
access should be terminated based upon an expiry of a threshold period of
time associated with the usage or based upon a request received from the
client computing device (Final Act. 8 ( citing Huang ,r 68); see also Ans. 8).
Appellants contend the Examiner erred because Huang describes
"evaluating after the fact information, such as whether a period of time has
elapsed or whether the number of times the video content has been played
exceeds a threshold." Appeal Br. 27. Appellants argue "there is no
indication of an accessed video content being terminated and the video
content thereby being locked." Id.; see also Reply Br. 17-18.
Analysis
We agree with Appellants that the Examiner's findings do not show
that Huang teaches or suggests determining an access should be terminated
based upon an expiry of a threshold period of time associated with the usage
or based upon a request received from the client computing device. See
Appeal Br. 26-28. In particular, Huang licenses content based on "a certain
number of uses or time period." Reply Br. 17. Specifically, Huang's
licenses
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may include information associated with terms of the license by
which the transcoded video content may be processed (e.g.,
decrypted, encrypted, etc.) and/or played by user device 210.
For example, the mobile DRM [digital rights management]
application may determine, from the information associated
with the terms of the license, that a rental period, a
subscription period, and/or a preview period, associated with
the transcoded video content, has expired. In another example,
the mobile DRM application may determine that a quantity of
times that the transcoded video content has been processed
and/or played, by user device 210, exceeds a threshold
identified in the information associated with the terms of the
license. In still another example, the mobile DRM application
may determine that a trial period, associated with the
transcoded video content, has expired.
Huang ,r 68 (italics added).
The Examiner relies on Huang's rental, subscription, preview, and
trial periods, and Huang's quantity of times, to teach or suggest: ( 1) "an
expiry of a threshold period of time associated with the usage" or (2) "a
request received from the client computing device." Final Act. 8. The
claimed expiry of a threshold period of time, however, is associated with
monitored "usage of the virtual machine." Huang's periods, in contrast, are
independent of usage of the content. Huang ,r 68. Moreover, Huang's
quantity merely relates to how many times the content has been processed or
played rather than a time period associated with usage. Id. Furthermore, the
Examiner does not show that processing or playing content falls within a
reasonably broad interpretation of the claimed requested received from the
client device. See Final Act. 8; see also, e.g., Spec. ,r 42 ("control module
204 determines whether or not the customer requested a release of the leased
guest virtual machine 102"). The Examiner does not rely on Dhoolia, Ayala,
Oida, Garibay, or Ginter to teach or suggest the disputed recitation.
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For these reasons, we agree with Appellants that the Examiner's
findings do not show that Huang, even in combination with other cited art,
teaches or suggests the disputed recitation. Accordingly, we do not sustain
the Examiner's 35 U.S.C. § 103(a) rejection of claim 1, and the Examiner's
35 U.S.C. § 103(a) rejections of claims 2-20, which contain similar
recitations.
DECISION
Because we affirm at least one rejection of each claim, we affirm the
Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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