Ex Parte Baughman et al

Patent Trial and Appeal Board

Dec 27, 2018

14452769 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/452,769 08/06/2014
87334 7590
IBM END IPLA W (GLF)
c/o Garg Law Firm, PLLC
11910 Sendera Ln.
Richmond, TX 77407
12/31/2018
FIRST NAMED INVENTOR
Aaron K. Baughman
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.
END920 l 40078US 1 4645
EXAMINER
SECK, ABABACAR
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
uspto@garglaw.com
dpandya@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 AARON K. BAUGHMAN, BRIAN W. JENSEN,
and MAURO MARZORATI
Appeal2018-004717 1
Application 14/452,7692
Technology Center 2100
Before JOHN D. HAMANN, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this 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.
1 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Sept.
28, 2017), Reply Brief ("Reply Br.," filed Apr. 2, 2018), and Specification
("Spec.," filed Aug. 6, 2014), as well as the Examiner's Answer ("Ans.,"
mailed Feb. 28, 2018) and the Final Office Action ("Final Act.," mailed May
17, 2017).
2 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2018-004717
Application 14/452,769
THE CLAIMED INVENTION
Appellants' claimed invention relates to serving content in a data
network, including predictively adjusting resource refresh in a Content
Delivery Network ("CDN"). Spec. ,r 1. Claim 1 is representative of the
subject matter on appeal and is reproduced below.
1. A method for predictive adjustment of resource refresh in
a Content Delivery Network (CDN), the method comprising:
identifying a set of features in a resource, the resource
being served from a cache in the CDN, the CDN comprising a
set of data processing systems and data storage devices spread
across a data network to provide a caching function in content
delivery, a feature in the set of features causing a first
information available in the resource at a first time to change to
a second information in the resource at a second time
responsive to an event;
determining a set of weights corresponding to the set of
features, wherein a weight in the set of weight is related to a
corresponding feature in the set of features;
computing, using a processor and a memory, and using
the set of weights and the set of features, an entropy, the
entropy comprising a probability that the resource is going to
change;
computing, using the entropy, a stale probability, the
stale probability comprising a probability that an outdated
version of the resource is going to be served from the cache in
the CDN at the second time; and
adjusting a refresh information responsive to the stale
probability exceeding a threshold probability, wherein adjusting
the refresh information changes at least one of the entropy and
an other component used in computing the stale probability.
2
Appeal2018-004717
Application 14/452,769
REJECTION ON APPEAL
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 2-11.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
contentions that the Examiner erred. We disagree with Appellants'
contentions for the reasons discussed below.
(1) Claim Grouping
Appellants substantively argue the pending claims as a group, with
independent claim 1 being representative. See App. Br. 10. Thus, we decide
the appeal of the § 101 rejection on the basis of representative claim 1, and
refer to the rejected claims collectively herein as "the claims." See 37
C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
(2) § 101 Reiection
Appellants contend the Examiner improperly rejected the claims
under 35 U.S.C. § 101. See App. Br. 10-13; Reply Br. 2-3. According to
Appellants, the claims do not concern an abstract idea, and even if they did,
the claims would be patent eligible because the claims amount to
significantly more than an abstract idea. See id. We find Appellants'
arguments unpersuasive.
Section 101 of the Patent Act provides that "[ w ]hoever 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. The Supreme Court has explained that this
3
Appeal2018-004717
Application 14/452,769
provision is subject to a long-standing, implicit exception: "[l]aws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014). The Court has set forth a
two-part inquiry to determine whether this exception applies. First, we must
determine if the claim at issue is directed to one of those patent-ineligible
concepts. Alice, 134 S. Ct. at 2355. Second, if the claim is directed to one
of those patent-ineligible concepts, we must consider the elements of the
claim "both individually and as an ordered combination to determine
whether the additional elements transform the nature of the claim into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quotation marks
omitted) ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72 (2012)).
(i) Abstract ideas
We first consider whether the Examiner properly concluded the
claims are directed to one or more abstract ideas. The Examiner concluded
that the claims are directed to a mental process (i.e., identifying, determining
and calculating), which amounts to "[ o ]rganizing information through
mathematical correlations" or "[ m ]athematical [ r ]elationships/[ f]ormulas."
See Final Act. 4, 11 ( citing Digitech Image Tech., LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)); see also Ans. 5.
Appellants argue the claims are not directed to an abstract idea. App.
Br. 10-11. Appellants argue that "claim 1 is directed to an inventive
operation in a CDN, which satisfies an 'article of manufacture' or 'machine'
requirement for patentability." App. Br. 10 (citing Spec. ,r 4). For example,
Appellants argue that "[ c ]laim 1 specifically recites a machine limitation,
i.e., 'a processor and a memory,' that performs the steps of claim 1." Id. In
4
Appeal2018-004717
Application 14/452,769
addition, Appellants argue that the steps of identifying, determining, and
calculating are not part of a mental process because they "cannot be
performed manually by a human, especially in the specific manner in which
the steps are tied to a CDN." App. Br. 11 (citing In Ex parte Balestrieri,
Appeal No. 2013-007305 (PTAB Oct. 23, 2015) (non-precedential)).
Appellants have not persuaded us that the Examiner errs. The Federal
Circuit has explained that the abstract-idea inquiry requires "looking at the
'focus' of the claims, their 'character as a whole,"' to determine if the claims
are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016). We agree with the Examiner that the
claims are directed to the abstract ideas of identifying, determining, and
calculating, which are akin to the claims directed to image data processing
discussed in Digitech, 758 F.3d at 1351 (finding "a process that employs
mathematical algorithms to manipulate [ data or information] to generate
additional information is not patent eligible"). The instant claims also are
akin to the claims in Electric Power, which "though lengthy d[id] not go
beyond requiring the collection, analysis, and display of available
information in a particular field, stating those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance over conventional computer and network
technology." 830 F.3d at 1351.
We find that Digitech and Electric Power are sufficiently analogous to
establish that the instant claims are directed to an abstract idea. See Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (explaining
that when determining whether claims are directed to an abstract idea, "both
this court and the Supreme Court have found it sufficient to compare [the]
5
Appeal2018-004717
Application 14/452,769
claims at issue to those claims already found to be directed to an abstract
idea in previous cases").
Moreover, contrary to Appellants'' arguments, implementing an
abstract idea using a "physical machine" does not impart patent eligibility.
See Mayo, 566 U.S. at 84. Simply put, "not every claim that recites
concrete, tangible components escapes the reach of the abstract-idea
inquiry." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611
(Fed. Cir. 2016). In Alice, for example, "[ a ]11 of the claims [ we ]re
implemented using a computer." 134 S. Ct. at 2353, 2360. In addition, the
inability of a human to accomplish each step "does not alone confer
patentability." See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).
(ii) Inventive concept
We next consider whether the Examiner correctly concluded the
claims do not include 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." Alice, 134 S. Ct. at 2355 (quotation marks omitted) (quoting Mayo,
Inc., 566 U.S. at 72-73). The Examiner finds that the claims provide "no
indication that the limitations improve the functioning of a computer or
improve any other technology." Ans. 14. Rather, the Examiner finds that
the claims recite using a computer having generic components ( e.g., "a
processor and a memory"), "to perform all of the claim steps[, which] does
not impose any meaningful limit on the computer implementation of the
abstract idea." See Final Act. 4. Accordingly, the Examiner concludes that
6
Appeal2018-004717
Application 14/452,769
the claims do not amount to significantly more than the abstract ideas. Ans.
14; Final Act. 4.
Appellants contend that the claims add significantly more to the
abstract ideas. App. Br. 10-13; Reply Br. 2-3. To wit, Appellants argue
that claim 1 "specifically recites operations performed using a computer or
parts thereof, which improve the efficacy of the computer and implement the
claimed functions that perform a specific method to solve a problem unique
to the CDN." App. Br. 10; see also id. (citing Spec. ,r 17) (arguing that
DDR3 applies). More specifically, Appellants argue that a problem - the
delivery of stale content to users - exists in the technological field of
CDN s, and that the claims provide a solution by which the delivery of stale
content can be mitigated (i.e., "adjusting a refresh information responsive to
the stale probability exceeding a threshold probability"). Reply Br. 3.
We agree with the Examiner that the claims do not amount to
significantly more than the abstract ideas. Rather, the claims simply recite
generic computer systems (e.g., data processing systems and data networks),
generic components ( e.g., a processor, a memory, and a cache), and generic
functions ( e.g., identifying, determining and calculating, and adjusting data).
See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(finding the invocation of computers and generic functionality adds no
inventive concept). Moreover, nothing in the claims, understood in light of
the Specification (see, e.g., Spec. ,r,r 43-50), requires anything other than
off-the-shelf, conventional computers and devices used for collecting,
calculating, comparing, and adjusting various data.
3 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
7
Appeal2018-004717
Application 14/452,769
In addition, we are not persuaded by Appellants' reliance on DDR. In
DDR, the claims "specif[ied] how interactions with the Internet [ we ]re
manipulated to yield a desired result-a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink." See DDR, 773 F.3d at 1257-58 (emphasis added). Appellants'
claims are more akin to a generic computer programmed with conventional
steps (e.g., computing, computing, and adjusting), and, thus, fail to provide
an inventive concept. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1332 (Fed. Cir. 2015) (quoting Alice, 134 S. Ct. at 2358) (finding an
inventive concept "requires more than simply stating an abstract idea while
adding the words 'apply it' or 'apply it with a computer"'). Adjusting data
(i.e., a refresh) based on calculations does not override the normal operations
of a CDN, but instead simply adjusts the refresh frequency.
For the above reasons, we sustain the Examiner's rejection of
representative claim 1, as well as claims 2-20, grouped therewith.
DECISION
We affirm the Examiner's§ 101 rejection of 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)(l )(iv).
AFFIRMED
8