Ex Parte Braun et al

Patent Trial and Appeal Board

Mar 23, 2018

11763547 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111763,547 06/15/2007 Alan D. Braun
73109 7590 03/27/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
RSW920070 l l 9US 1
8152-0017
CONFIRMATION NO.
3837
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAND. BRAUN, ISAAC J. GRAF, and
SHOEL D. PERELMAN
Appeal 2016-006528 1
Application 11/763,5472
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-12, 14, and 15, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
1 Our Decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Feb. 24, 2016) and Reply Brief ("Reply Br.," filed June 7, 2016), and the
Examiner's Final Office Action ("Final Act.," mailed Sept. 24, 2015) and
Answer ("Ans.," mailed Apr. 7, 2016).
2 According to Appellants, the real party in interest is IBM Corporation
(Appeal Br. 1 ).
Appeal2016-006528
Application 11/763,547
We AFFIRM.
Introduction
Appellants' application relates "to the field of computers, and
specifically to software [and even more specifically to] dynamically creating
a service model of computing resources." (Spec. i-f 1 ).
Claims 1, 4, and 5 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented method for dynamically
creating a service model, comprising:
presenting a plurality of service model templates;
receiving an input that selects one of the service model
templates for construction of a selected service model, wherein
the selected service model represents real-time relationships
and characteristics of depicted resources;
identifying external data sources that are used to describe
the real-time relationships and characteristics of the depicted
resources; and
constructing, using a processor, the selected service
model using the identified external data sources, wherein
the input is an event that is received from a plurality of
data sources, wherein the event describes changes to the
plurality of data sources.
(Appeal Br., Claims App'x)
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
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Claims 1-12, 14, and 15 stand rejected under 35 U.S.C. § 101
as being directed to an abstract idea without significantly more. See
Final Act. 4--5.
ANALYSIS
Claims 1-12, 14, and 15
The Court in Alice emphasized the use of a two-step framework for
analysis ofpatentability under 35 U.S.C. § 101:
First, we 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, we 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.
See Alice Corp. Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
The Examiner determines that claims 1-3, 6-12, 14, and 15 are
directed to creating a service model which represents real-time relationships
and characteristics of depicted resources, and that describing the
relationships and characteristics of resources is a long-standing method of
organizing human activities, and thus an abstract idea. See Final Act. 4. As
an example, the Examiner finds that the US military relies on "Tables of
Organization and Equipment." Id. The Examiner also states that comparing
new and stored information and using rules to identify options is an abstract
idea. Id. at 4--5. The Examiner makes similar determinations with respect to
independent claims 4 and 5, which are directed to methods for creating a
service model. Final Act. 6-7.
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The Examiner analyzes the additional elements of the claimed
invention as follows:
The additional physical element is a computer (i.e. computer-
implemented), while the additional method elements are
displaying data (i.e. presenting a plurality of service model
templates), receiving data (i.e. receiving an input that selects one
of the service model templates, identifying external data
sources); and a description of one of those elements (wherein the
input is an event that is received from a plurality of data sources,
wherein the event describes changes to the plurality of data
sources).
Id. at 5. Of these additional elements, the Examiner finds that the physical
elements comprise generically recited computer elements that do not add a
meaningful limitation to the abstract idea because they would be routine in
any computer implementation and the method elements are insignificant
extra-solution steps of displaying, receiving and describing data. Id. The
Examiner determines that "the claimed invention does not constitute an
improvement in another technology or in the computer itself, does not
transform an article into another state or thing, nor are there any
unconventional steps." Id.
The first issue is what, if any, is the idea to which the claimed
invention is directed. The Examiner recognized that the claimed invention is
"directed to creating a service model." Final Act. 4. Appellants argue that
the Examiner's characterization of the claimed invention is an
oversimplification, and represents neither an idea nor an abstract idea. See
Appeal Br. 7. Appellants argue that the Examiner fails to appreciate the
difference between a claim being "directed to" an abstract idea and a claim
that implicates in some manner an abstract idea. Reply Br. 2.
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Application 11/763,547
We agree with the Examiner that the claims are directed to
"dynamically creating a service model" based on the terms of claim 1. The
Examiner determines that claimed creation of a service model was a method
of organizing human activities because it "represents real-time relationships
and characteristics of depicted resources." Final Act. 4. We agree with the
Examiner that assessing resource characteristics is a longstanding method of
organizing human activity and is thus abstract.
Appellants argue that creating a service model is neither an idea nor
abstract because an action is performed, using a computer, to create a
specific computer data structure which is not a fundamental economic
practice, a certain method of organizing human activities, an idea "of itself,"
or a mathematical relationships/formula. Appeal Br. 7. Appellants argue
that the Examiner has not presented any explanation to support the
Examiner's assertion that "creating a service model" is a "method of
organizing human activities." Id. at 8. Nevertheless, the Examiner's
characterization is based on a direct quotation of one of the recited steps of
independent claim 1, i.e., "identifying external data sources that are used to
describe the real-time relationships and characteristics of the depicted
resources."
The Examiner refers to the military' s inventory system as evidence
that taking stock of resources is a longstanding practice. See Final
Act. 4. Appellants contest the Examiner's reference to US military "Tables
of Organization and Equipment" because the Examiner does not supply a
written document and because such a Table would be static and would not
represent real-time relationships and characteristics of depicted
resources. Appeal Br. 7-8. However, the example is merely illustrative and
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is only one part of the Examiner's reasoning. Even putting aside US
military "Tables of Organization and Equipment," we agree with the
Examiner's determination that taking stock of resources is a method of
organizing human activity.
Further, the Examiner determines that the claimed invention is
abstract for an additional reason, i.e., because it compares new and stored
information and then uses rules to identify options. Final Act. 4--5. We
agree with the Examiner that the claimed invention is abstract for this
additional reason as well, i.e., because it relates to data processing and
displaying of information without programmatic structure. Ans. 3, 5 (citing
SmartGene, Inc. v. Advanced Biological Labs., 555 F. App'x 950 (Fed. Cir.
2014)).
Appellants further argue that the claimed invention is unlike that in
SmartGene in which every step could be performed by a doctor "in their
heads." Appeal Br. 8. The Examiner reasons that the templates on which
Appellants rely upon are not necessarily computer structures because they
can be created using pen and paper, and in any event, are unclaimed. Ans.
5. Appellants argue that the service model is necessarily a data structure,
and an improvement in computer functionality. Reply Br. 5.
We agree with the Examiner because the claims are not directed to
any one particularized data structure. Rather, the claim simply recites the
selection of a template, without providing a specific template. Neither the
claims nor the Specification further detail what this template is. The only
detailed examples are found in Figure 5, which designates a low
performance entity and a communication failure. However, we determine
that these diagrams do not provide particularized computer structures. As
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Application 11/763,547
such, the claim is directed to a method of selecting a design (without
implementing instructions), which is an attempt to claim the fundamental
building blocks of human ingenuity. See, e.g., Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1139 (Fed. Cir. 2016) (claims directed to
abstract idea of translating a functional description of a logic circuit into a
hardware component description of the logic circuit).
Moreover, the claimed invention resembles the type of invention at
issue in Electric Power Group. v. Alstom S.A., where the Federal Circuit
found a method of gathering, analyzing, and displaying information without
any particular inventive technology to be abstract. Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (citations omitted)
("In a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category. And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis."). See also Ans. 7-8 (discussing the displaying,
receiving, and describing of data).
Appellants argue that the claimed invention is not directed to
displaying, receiving, and describing data because the claim identifies
external data sources as well. Reply Br. 9. However, even under this
argument, the claimed invention resembles that at issue in Electric Power
Group, which related to the display of information relating to measurements
of grid data and non-grid data from data sources. See Electric Power Grp.,
830 F.3d at 1351.
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The Examiner also determines that the claimed invention is similar to
Classen and CyberSource because it collects and compares
information. Ans. 3--4 (citing Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057 (Fed. Cir. 2011); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)). Appellants argue
that this is a new ground of rejection, but have not petitioned for designation
of a new ground of rejection. Reply Br. 3. As such, this argument is
waived. See 37 C.F.R. § 41.40(a). Appellants argue that the claimed
invention here is unlike that in Classen because the invention in Classen did
not have a practical use. Reply Br. 3. However, this is an argument that
goes to utility rather than abstractness and does not make the claimed
invention less abstract as in Mayo, where information for optimizing
therapeutic efficiency of 6-thioguanine was designed to improve patient
care, but was found unpatentable. Mayo, 566 U.S. at 71.
Appellants argue that the Examiner misstates the holding of
CyberSource which is limited to claims drawn to mental processes. Reply
Br. 4--5 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372 (Fed. Cir. 2011)). However, as above, generic data processing
functions, such as receiving and displaying information, may be patent
ineligible as well. See Electric Power Grp., 830 F.3d at 1351.
Under step two of Alice inquiry, Appellants argue that the Examiner
has not explained why the additional elements do not add significantly more
to the claimed invention, e.g., "constructing ... the selected service model,"
"a plurality of service model templates," "receiving an input that selects one
of the service model templates," and "using the identified external data
sources" when constructing the selected service model. Appeal Br. 9-
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10. Appellants argue that the Board cannot affirm the Examiner on the
proposed basis if the Examiner's fails to provide concrete evidence in
support. Appeal Br. 9--13 (citing In re Sang-Su Lee, 277 F.3d 1338, 1344--
45 (Fed. Cir. 2002)). However, the Examiner analyzed the additional
limitations and determined that they related to conventional computer
functions. Final Act. 4, id. at 5; Ans. 6-7. We agree with the Examiner's
determination because the Specification, which constitutes intrinsic
evidence, refers to generic computer functions (see Spec. i-fi-f 14 (including
general purpose computer and data sources), 20 (operating system and
application programs), 21(Internet),26 (data source), Figs. 1, 3), and
because the claims do not provide a specific template. Accordingly, we
determine that the additional limitations taken individually and as whole do
not add significantly more to the abstract idea of creating a service model
based on analyzing resources.
Finally, Appellants argue that the claimed invention does not tie up
the alleged abstract idea because of its additional limitations. Appeal Br. 9.
However, a showing of pre-emption is not required for a determination that
an idea is directed to non-patentable subject matter. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) ("Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.").
Therefore, we sustain the Examiner's rejection under§ 101 of
claim 1. We have reviewed the additional recitations of claims 2-12, 14,
and 15, and determine that they are directed to the same abstract idea of
creating a service model based on analyzing resources without significantly
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more. We sustain the Examiner's rejection under§ 101 of claim 2-12, 14,
and 15, for similar reasons as independent claim 1.
DECISION
The Examiner's decision to reject claims 1-12, 14, and 15 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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