Ex Parte Brignone et al

Patent Trial and Appeal Board

Jun 11, 2018

11389785 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/389,785 03/27/2006 Cyril Brignone
56436 7590 06/13/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82220024 8633
EXAMINER
PRESTON, JOHN 0
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
hpe.ip.mail@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYRIL BRIGNONE,
ALAN MCREYNOLDS,
and JEAN TOURRIHES
Appeal2016--008540
Application 11/389,785 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Hewlett Packard
Enterprise Development LP. Br. 3.
Appeal2016-008540
Application 11/389,785
STATEMENT OF THE CASE2
Cyril Brignone, Alan McReynolds, and Jean Tourrihes (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1-3 and 5-23,
the only claims pending in the application on appeal. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented an asset management system that uses policies
based on the location of the assets. Specification para. 14.
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 method of managing assets using at least one policy, the
method comprising:
[ 1] storing at least one policy associated with managing assets,
wherein each of the assets
is located in one of a plurality of slots in a rack
and
includes an RFID tag identifying the asset;
[2] reading, by an RFID reader array, the RFID tag of each of
the assets
to detect which slot in the rack the asset is located;
[3] determining slot location in the rack for each of the assets
based on the reading of the RFID tag of each of the
assets;
2 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed December 10, 2015) and the Examiner's Answer ("Ans.," mailed May
9, 2016), and Final Action ("Final Act.," mailed September 11, 2015).
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Application 11/389,785
[ 4] receiving sensor information indicating a condition of each
of the assets;
[5] determining, by a processing device, whether the at least
one policy applies to each of the assets
and
based at least on the slot location and the sensor
information of the asset;
[ 6] for each of the assets, performing a control function
based on a determination that the at least one policy
applies to the asset,
wherein performing a control function includes
controlling another computer system that is operable to
directly or indirectly affect each asset that the at least one
policy applies.
Claims 1-3 and 5-23 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
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.
ANALYSIS
Claims 1, 12, and 13 are the independent claims on appeal, with the rest
of the claims on appeal depending therefrom.
The Examiner rejects these claims according to the two step procedure in
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347 (2014). As to the first
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Appeal2016-008540
Application 11/389,785
step, the Examiner finds that the claims are directed to managing a collection
of assets using at least one policy. Final Act. 3. We agree. The preamble to
claim 1 recites that it is a method of managing assets using at least one
policy. The steps in claim 1 result in determining the applicability of a
policy and performing a control function based on that determination. The
Specification at paragraph 14 recites that the invention relates to an asset
management system that uses policies based on the location of the assets.
Thus all of the evidence supports the Examiner's finding that claim 1 is
directed to managing a collection of assets using at least one policy, which,
like the risk hedging in Bilski is a notoriously old practice and therefore an
abstract idea. See Bilski v. Kappas, 561 U.S. 593 (2010). The remaining
independent method claim is similar.
The second step of the Alice test requires the consideration of "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." Alice, 134 S. Ct. at 2355.
Independent claims 1, 12, and 13 recite an RFID reader array and
assets having RFID' s, the assets being in rack slots, and the slot location
being determined by reading the RFID's using the reader array, and using
that slot information to apply some policy to some particular asset.
According to the Appellants, the claims solve technical problems.
One technical problem is how to perform pinpoint and
autonomous and nearly continuous asset detection. Another
technical problem is how to detect assets when the assets are
nonfunctional, powered down or detached from the network. A
technical solution to these problems includes the RFID tags and
readers that are external to the assets but which may be located
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Appeal2016-008540
Application 11/389,785
on or near slots in a rack where the assets are housed to detect
assets in the slots.
Br. 15.
Examiner finds that:
The claim( s) does/ do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because all of the elements described in the claimed
invention are part of the abstract idea itself.
Final Act. 3. We agree with the Examiner that the claims appear to
recite a generic cornputer systern with generic RFU) tags that perfonn
generic functionalities which are weU----understood. routine and conventional.
~ .
Id.
However, the Examiner does not sufficiently establish that the "ordered
combination" of the recited elements also fails to "'transform the nature of
the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355.
"[A]n inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces," even if these pieces
constitute generic computer-related components. Bascom Global Internet v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). In the instant
claims the arrangement is an RFID reader array that is structurally
positioned relative to slots of individual assets having RFID' s to determine
which slots individual assets are in and using the then determined slot
information to implement policies as appropriate.
As discussed above, the Appellants explain that the claimed architecture
(i.e., the ordered combination and arrangement of the recited elements)
provides a particular technical advantage. The Examiner does not
persuasively challenge the Appellants' position on this matter.
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Application 11/389,785
Accordingly, the Examiner has not sufficiently established, on the
record before us, that independent claims 1, 12, and 13 ( and the claims
depending therefrom) do not pass muster under step two of the Alice test.
CONCLUSIONS OF LAW
The rejection of claims 1-3 and 5-23 under 35 U.S.C. § 101 as directed
to non-statutory subject matter is improper.
DECISION
The rejection of claims 1-3 and 5-23 is reversed.
REVERSED
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