Ex Parte Baysah et al

Patent Trial and Appeal Board

Dec 20, 2018

14987968 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/987,968 01/05/2016
70426 7590 12/25/2018
IBM AUSTIN IPLA W (DL)
DeLizioLaw
C/0 DELIZIO LAW, PLLC
15201 MASON ROAD, SUITE 1000-312
CYPRESS, TX 77433
FIRST NAMED INVENTOR
Irving G. Baysah
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.
AUS920120451 US2 7506
EXAMINER
HARRINGTON, CHERI L.
ART UNIT PAPER NUMBER
2187
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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@DELIZIOLA W.COM
USPT02@DELIZI0LA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRVING G. BAYSAH, JOHNS. DODSON,
KARTHICK RAJAMANI, ERICE. RETTER,
SCOT H. RIDER, TODD JON ROSEDAHL,
GREGORY SCOTT STILL, GARY VAN RUBEN, and
MALCOM S. ALLEN-WARE 1
Appeal2018-004918
Application 14/987 ,968
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JON M. JURGOV AN, and
JOHN R. KENNY, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-10 and 16-25. App. Br. 1 (cover sheet). These claims all stand
rejected under 35 U.S.C. § 101 as being directed to a patent-ineligible
abstract idea without reciting significantly more. Final Action 2-5, mailed
May 17, 2017 ("Final Act."). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. Appeal Brief 1 ( second occurrence) filed Oct. 17, 2017
("App. Br."). The Appeal Brief numbers the cover sheet as page 1 and then
restarts the numbering with page 1 again after the table of contents.
Appeal2018-004918
Application 14/987,968
THE INVENTION
Appellants describe the present invention as follows:
A system with a local data collector that collects power
management data for a subsystem. The local data collector can
determine whether a first formatting associated with a first
channel between the local data collector and a system power
management data collector is equivalent to a second formatting
associated with a second channel between the local data collector
and the system power management data collector, and in
response to a determination that the first formatting and second
formatting are not equivalent[,] format the power management
data according to the first formatting; store the power
management data formatted according to the first formatting in a
first location in a memory; format the power management data
according to the second formatting; and store the power
management data formatted according to the second formatting
in a second location the memory.
Abstract.
Independent claim 1, reproduced below, illustrates the claimed
invention:
1. A method comprising:
collecting, by a local data collector on a controller for a
subsystem, power management data for the subsystem, the
controller communicably coupled to a processor having a system
power management data collector, wherein the local data
collector comprises a first logic unit on the controller and
wherein the system power management data collector comprises
a second logic unit of the processor;
determining, by the local data collector, whether a first
formatting associated with a first channel between the local data
collector and the system power management data collector is
equivalent to a second formatting associated with a second
channel between the local data collector and the system power
management data collector;
2
Appeal2018-004918
Application 14/987,968
in response to determining, by the local data collector, that
the first formatting and second formatting are not equivalent:
formatting the power management data according to
the first formatting,
storing the power management data formatted
according to the first formatting in a first location in a
memory,
formatting the power management data according to
the second formatting, and
storing the power management data formatted
according to the second formatting in a second location in
the memory; and
selecting, by the system power management data collector,
the first channel based, at least in part, on channel states of the
first channel and the second channel; and
retrieving, by the system power management data
collector, the power management data along the first channel in
accordance with the first formatting.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
Regarding the question of patent eligibility under 35 U.S.C. § 101, a
patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 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. v. CLS Bank Int 'l, 134 S. Ct.
3
Appeal2018-004918
Application 14/987,968
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)). Accordingly, in applying the
§ 101 exception, the Supreme Court cautioned:
[W]e must distinguish between patents that claim the
"'buildin[g] block[ s]"' of human ingenuity and those that
integrate the building blocks into something more, thereby
"transform[ing]" them into a patent-eligible invention. The
former "would risk disproportionately tying up the use of the
underlying" ideas, and are therefore ineligible for patent
protection. The latter pose no comparable risk of pre-emption,
and therefore remain eligible for the monopoly granted under our
patent laws.
Alice, 134 S. Ct. at 2354--55 (all brackets in original except first set)
(internal citations omitted).
In Alice, the Supreme Court has set 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. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we
determine whether the claim at issue is "directed to" a judicial exception,
such as an abstract idea. Id. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claim is
determined to be directed to an abstract idea, then we consider under step
two whether the claim contains an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea under
step one, we acknowledge, as did the Supreme Court, that "all inventions at
4
Appeal2018-004918
Application 14/987,968
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 the claim focuses on a specific means or method that improves the
relevant technology or is instead directed to a result or effect that, itself, is
the abstract idea and merely invokes generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
In the second step of the Alice analysis, if applicable, we must
consider whether the claim contains an element or a combination of
elements that is sufficient to transform the nature of the claim into a patent-
eligible application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714
(Fed. Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[es] significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter. We look to see
whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted). A claim that "merely require[ s] generic
computer implementation[] fail[ s] to transform [an] abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2357.
Central to our analysis herein is the fundamental principle that the
Alice framework must be applied to the claims, as properly construed. As
our reviewing court has stated, "[ t ]he § 101 inquiry must focus on the
language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016); see also Accenture
5
Appeal2018-004918
Application 14/987,968
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
(Fed. Cir. 2013) (admonishing that "the important inquiry for a§ 101
analysis is to look to the claim"); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
(focusing on "whether the claims of the asserted patents fall within the
excluded category of abstract ideas") ( emphasis added).
These principles are based on long-established jurisprudence that "[i]t
is the claims [that] define the metes and bounds of the invention entitled to
the protection of the patent system." In re Warmerdam, 33 F.3d 1354, 1360
(Fed. Cir. 1994) (citing Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19
F.3d 1418, 1424 (Fed. Cir. 1994)).
to an
CONTENTIONS
The Examiner determines that independent claims 1 and 6 are directed
abstract idea [that] is substantially similar to the court[ -]
identified abstract ideas of collecting information and analyzing
it as found in [Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016)] and collecting and comparing known
information[,] as found in [ Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)].
Final Act. 3.
Appellants argue that the claims are not directed to an abstract idea
because, inter alia, the focus of the claims is on a specific improvement in
computer capabilities, and that the computer is not invoked merely as a tool
to enact well-known business practices. App. Br. 12-13 (citing Enfzsh, 822
F.3d 1327). Appellants also argue that even if the claims reasonably can be
characterized as being directed to an abstract idea under step one of Alice,
6
Appeal2018-004918
Application 14/987,968
the claims still are patent eligible under step two of Alice because the claim
elements, when viewed in combination as a whole, recite significantly more
than an abstract idea. Id. at 14--15 (citing BASCOM Global Internet Servs.
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Both of these arguments are based on Appellants' underlying position
that "the claims are directed to improvements in processors and controllers
that make the processors and controllers more efficient and 'allows power
management to operate in a dynamic system while satisfying the demands of
timeliness for power management."' App. Br. 15 ( citing Spec. ,r 12).
According to Appellants,
the pending claims provide an ordered combination of the claim
elements that provide a technology-based solution to overcome
existing problems with known systems, resulting in a claimed
invention that improves the performance of a computer system
comprising a processor and a controller .... [T]he present claims
are an ordered combination of elements directed to efficiently
handling power management data in a distributed system
involving a processor and controllers. Power management data
can be retrieved in a format and via a channel that is most
efficient at a particular time interval. Thus, the claims recite an
ordered combination of elements that provide a more efficient
and dynamic processor and controller configuration than that
provided by conventional processors and controllers.
Id. at 15.
The Examiner determines Appellants' arguments to be unpersuasive,
in part, because the Examiner determines that these arguments are not
commensurate in scope with the claim language. See, e.g., Answer 5-6,
filed February 8, 2018 ("Ans."). The Examiner instead determines that
"[t]he claim language of both of [the terms "local data collector logic unit"
and "power management logic unit"] has a high level of generality[,] which
7
Appeal2018-004918
Application 14/987,968
leads to be able to broadly interpret the meaning of these [functional]
blocks." Id. at 7. The Examiner then determines that the claimed "first logic
unit" and "second logic unit" merely read on software that performs a
function that is implemented on a general purpose computer without adding
significantly more. Id.
The Examiner also determines that "[t]he independent claims of this
application do not realize the [Specification's] disclosed advantages [ofJ
'allow[ing] the power management to operate in a dynamic system while
satisfying the demands of timeliness for power management."' Id. at 8
( citing Spec. ,r 12). The Examiner reasons, as follows:
First, the invention as recited in the claims only moves data from
one location to another ( collects, formats, selects and retrieves).
It never applies the data gathered to the power management
operation in a timely manner. Second, the Appellant's argument
that "allow a processor to select a channel to receive power
management data from a controller in a manner and via a channel
that is most efficient at the time interval during which the power
management data is to be retrieved" [ sic: " . . . is not
commensurate is scope with the claim language"?]. First,
nowhere in the claims is anything recited that requires the
evaluation to be done within a certain time interval.
Additionally, as discussed above, the efficiency is never realized
in the claims. Therefore, the analysis of Enfish relied on the
claims and the specification to find improvements in the
functionality and capabilities of the computer, whereas the
applicant's claim appears to only about improving collection of
data using the abstract ideas of collecting, determining, and
selecting.
Id. at 8-9.
8
Appeal2018-004918
Application 14/987,968
ANALYSIS
We will assume, solely for the sake of argument, that the Examiner is
correct in concluding all of the claims are directed to "the abstract ideas of
collecting determining and selecting," under step one of the Alice inquiry.
However, this assumption does not address the separate question of whether
the claim elements, when viewed in combination as a whole, recite
significantly more than an abstract idea.
Claim 1, for example, specifically recites the steps of determining
whether the data formats for first and second channels are equivalent, and
then, in response to determining that they are not equivalent, performing the
following two steps:
"selecting, by the system power management data
collector, the first channel based, at least in part, on channel
states of the first channel and the second channel; and
retrieving . . . the power management data along the first
channel in accordance with the first formatting."
Claim 1 ( emphasis added). That is, independent claims 1 and 6 require that
a computer perform the channel-selecting step.
So even if the step of selecting a communication channel generally is
directed to an underlying abstract idea under step one of the Alice inquiry,
the Examiner still must provide a factual basis for concluding under Alice's
step two that a computer performing this step constitutes the use of a
general-purpose computer in a manner that was well-understood, routine,
and conventional. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed.
Cir. 2018) ("The question of whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in
the relevant field is a question of fact.")
9
Appeal2018-004918
Application 14/987,968
Furthermore, this requirement still exists even though the disputed
selecting step is claimed as broadly as noted by the Examiner. Ans. 8-9.
The fact that claim 1 does not recite the step as narrowly as argued by
Appellants (see, e.g., App. Br. 15) does not mean that the Examiner is
relieved of all responsibility of providing a factual basis supporting the legal
conclusion the Examiner reached in relation to the disputed limitation. It
merely means that the Examiner's factual basis needs to be commensurate in
scope with the breadth of the computer functionality that actually is being
claimed.
In the present case, the Examiner has not set forth a sufficient factual
basis to support the conclusion that a computer selecting one of a plurality of
communication channels based on the channels' states constituted a well-
understood, routine, and conventional computer function. See Final Act. 3,
5; Ans. 6-10.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 101 of
independent claims 1 and 6, which both recite a computer performing the
noted selecting step. We likewise do not sustain the§ 101 rejection of
claims 2-5, 7-10, and 16-25, which depend from claims 1 or 6.
DECISION
The Examiner's decision rejecting claims 1-10 and 16-25 is reversed.
REVERSED
10