Ex Parte Boss et al

Patent Trial and Appeal Board

Oct 12, 2018

12203399 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/203,399 09/03/2008
26681 7590 10/16/2018
Driggs, Hogg, Daugherty & Del Zoppo Co., LP.A.
38500 CHARDON ROAD
DEPT. IEN
WILLOUGHBY HILLS, OH 44094
Gregory J. Boss
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.
END920070337US1-IEN106395 3100
EXAMINER
BROCKINGTON III, WILLIAMS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
usptocommunications@driggslaw.com
mwheeler@driggslaw.com
cgiacomazzo@driggslaw.com
PTOL-90A (Rev. 04/07)
-UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. BOSS,
JAMES R. DORAN,
RICK A. HAMILTON II,
and ANNE R. SAND
Appeal2017---001690
Application 12/203,399
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Gregory J. Boss, James R. Doran, Rick A. Hamilton II, and Anne R.
Sand (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 28, 2015) and Reply Brief ("Reply Br.," filed November
7, 2016), and the Examiner's Answer ("Ans.," mailed September 8, 2016),
and Final Action ("Final Act.," mailed June 30, 2015).
Appeal2017-001690
Application 12/203,399
claims 1-5, 8-12, 14--18, the only claims pending in the application on
appeal. 2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way to request a customer to re-allocate all or
part of a computational workload. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for a power provider to
employ a re-allocation of a computational workload for a
customer, the method comprising executing on a processor the
steps of:
[ 1] detecting a service situation having a potential adverse
impact on a future quality of service to be offered by a power
provider to a first customer for a pre-registered work job of a
computational workload of the first customer,
wherein the pre-registered work job is within a portion of
the computational workload of the first customer that is
pre-registered with the power provider for re-allocation;
[2] determining whether timing of the work job is flexible;
[3] in response to determining that the timing of the work job is
flexible,
moving the work job from a current time frame
scheduled for running the work job to a different time
frame;
[4] in response to determining that the timing of the workjob is
not flexible,
2 Claims 19-25 were cancelled in an amendment filed October 28, 2015.
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determining whether a different geographical location is
available;
[ 5] in response to determining that the different geographical
location is available,
moving the work job from an original geographical
location to the different geographical location;
[ 6] in response to determining that the different geographical
location is not available,
determining whether another power provider is available;
and
[7] in response to determining that the another power provider
is available,
moving the work job from the power provider to the
another available power provider.
Claims 1-5, 8-12, 14--18 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. 3
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
3 A rejection under 35 U.S.C. § 112, second paragraph, is withdrawn. Ans.
2.
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Appeal2017-001690
Application 12/203,399
ANALYSIS
Method claim 1 recites detecting a situation and making a number of
determinations, and allocating work according to those determinations.
Thus, claim 1 recites data input, analysis, and output. None of the
limitations recite implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. The
recited "moving the work job" in particular has no implementation detail,
and so textual instruction to an operator to move the job is within the scope
of the claims. It is the job identifying the work rather than the work itself
that is moved. Data reception, analysis and output are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-output is equally generic and conventional. The ordering of the
steps is therefore ordinary and conventional. The remaining claims merely
describe parameters for the allocation process, with no implementation
details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each 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. [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
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that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Banklnt'l., 134 S.Ct. 2347, 2355 (2014)
( citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to allocating work. Final Act. 8.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method for a power provider
to employ a re-allocation of a computational workload for a customer. The
steps in claim 1 result in rescheduling or re-allocating work. The
Specification at paragraph 1 recites that the invention relates to requesting a
customer to re-allocate all or part of a computational workload. Thus, all
this evidence shows that claim 1 is directed to re-allocating or rescheduling
work, i.e. work allocation. This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, we find that the concept
of work allocation is a fundamental business practice long prevalent in our
system of commerce. The use of work allocation is also a building block of
ingenuity in production scheduling. Thus, work allocation, like hedging, is
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an "abstract idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd. at
2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of work
allocation at issue here. Both are squarely within the realm of "abstract
ideas" as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
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The remaining claims merely describe parameters for the allocation
process. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he 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 preemption
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 Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to input, analyze, and output data amounts to electronic data query
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and retrieval----one of the most basic functions of a computer. The recited
"moving the work job" has no implementation detail, and so textual
instruction to an operator to move the job is within the scope of the claims.
It is the job identifying the work, rather than the work itself, that is moved.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp. v. Alstom
S.A., supra. Also see In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,'
... those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP America Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-output is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
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transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of work allocation as performed by a generic computer. To be sure, the
claims recite doing so by advising one to check availability of resources and
let one know when resources are available. But this is no more than abstract
conceptual advice on the parameters for such work allocation and the
generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Further, the Specification only
discloses different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of work allocation under different
scenarios. The Specification does not describe any particular improvement
in the manner a computer functions. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply the abstract idea of
work allocation using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. at 2360.
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As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd. at 2360.
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 8 and Answer 3-15 and reach
similar legal conclusions. We now tum to the Reply Brief arguments.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, 822 F.3d 1327 (Fed. Cir. 2016). Reply Br. 2.
The claims differ from those found patent eligible in Enfzsh, where the
claims were "specifically directed to a self-referential table for a computer
database." J d. at 13 3 7. The claims thus were "directed to a specific
improvement to the way computers operate" rather than an abstract idea
implemented on a computer. Id. at 1336. Here, by contrast, the claims
are not directed to an improvement in the way computers operate.
Though the claims purport to accelerate the process of shifting workload
allocation, our reviewing court has held that speed and accuracy
increases stemming from the ordinary capabilities of a general purpose
computer "do[] not materially alter the patent eligibility of the claimed
subject matter." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims are
more analogous to those in FairWarning, wherein claims reciting "a few
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possible rules to analyze audit log data" were found directed to an
abstract idea because they asked "the same questions (though perhaps
phrased with different words) that humans in analogous situations
detecting fraud have asked for decades." FairWarning, 839 F.3d at 1095.
Humans have reallocated workloads to meet constraints for centuries, as it is
the nature of work to operate under constraints.
We are not persuaded by Appellants' argument that claim 1 is analogous
to those involved inMcRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016), wherein the Court found claims of software
patents were not directed to abstract ideas under Alice step one. Reply Br. 2.
The claims in McRO were not directed to "a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type." We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
human animators." The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
In McRO, "it was the incorporation of the claimed rules for the process
of creating animation, not the use of the computer, that improved the
existing technology process," because the prior process performed by
humans "was driven by subjective determinations rather than specific,
limited mathematical rules." 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
application merely direct workload job transfers based on constraints and are
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not directed to a technological operation such as animation, for which
another technological solution in the form of mathematical rules
unobstructed by human intervention to interpolate the animation sequences
is employed. In particular, the claims recite nothing about how the jobs are
actually executed and the workload jobs are not computer animation.
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016)). Reply Br. 2. Initially, we remind Appellants that Bascom did
not find claims eligible, but rather that the Appellees did not provide
sufficient evidence to support a 12(b )( 6) motion to dismiss in which facts are
presumed in the non-movant's favor. The key fact in Bascom was the
presence of a structural change in "installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." Bascom, 827 F.3d at 1350. The instant claims, in contrast, perform
the routine sequence of obtaining constraint data and shifting job data
accordingly.
We are not persuaded by Appellants' argument that the claims present
specific rules and do not preempt all "approaches that use rules of a different
structure or different techniques. Reply Br. 8. "Where a patent's claims are
deemed only to disclose patent ineligible subject matter under the Mayo
[/Alice] framework, as they are in this case, preemption concerns are fully
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addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015).
We are not persuaded by Appellants' argument that the "specifically
claimed limitation combination recites a specific way to efficiently automate
and thereby autonomously effect decisions as to whether and where to re-
allocate computational workloads, via non-conventional routines that are
unknown in the prior art." Reply Br. 5. The limitation is specific only in the
sense it uses words to specify it. Claim 1 presents a query for the presence
of three very general constraints, viz. time, place, and provider, and
reallocates jobs accordingly. Far from being non-conventional, this is
routine practice for manufacturers operating under constraint. To the extent
Appellants would argue that this is a different context than manufacturing,
"The Supreme Court and this court have repeatedly made clear that merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016).
We are not persuaded by Appellants' argument that the claims would not
preempt the idea. Reply Br. 7. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo [/Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
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moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
CONCLUSIONS OF LAW
The rejection of claims 1-5, 8-12, 14--18 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1-5, 8-12, 14--18 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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