Ex Parte Burton et al

Patent Trial and Appeal Board

Sep 24, 2018

12834665 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/834,665 07/12/2010
45216 7590 09/26/2018
Kunzler, PC.
50 W. Broadway
10th Floor
SALT LAKE CITY, UT 84111
FIRST NAMED INVENTOR
Helena C. Burton
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.
TUC920100069US1 8892
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
docket@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELENA C. BURTON, BRIAND. CLARK, JUAN A.
CORONADO, BETH A. PETERSON, and RICHARD A. RIPBERGER
Appeal2017-007569
Application 12/834,665 1
Technology Center 3600
Before MARC S. HOFF, MATTHEW R. CLEMENTS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1 and 3-20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants' invention is an apparatus, system, and method for
function monitoring of a storage controller. An identification module
identifies one or more advanced functions of the storage controller. A
detection module detects use of a particular advanced function. The
1 The real party in interest is International Business Machines Corporation.
2 Claim 2 has been cancelled.
Appeal2017-007569
Application 12/834,665
monitoring module monitors the detected use of the particular advanced
function on the storage controller, according to a monitoring routine. See
Abstract.
Claim 1 is exemplary of the claims on appeal:
1. An apparatus for advance function monitoring, the apparatus
compnsmg:
a storage controller managing data storage on one or more
storage devices;
an identification module configured to identify one or more
advanced functions on the storage controller, the one or more advanced
functions comprising optional storage operations of the storage controller,
the one or more advanced functions separate from the standard functions of
a standard function set of the storage controller;
an initialization module configured to initialize a monitoring
routine separately for each advanced function of the one or more identified
advanced functions, a monitoring routine for a particular advanced function
being defined by one or more monitoring parameters of the particular
advanced function;
a detection module configured to detect use, by the storage
controller, of the particular advanced function of the one or more identified
advanced functions, the detection module detecting use of the particular
advanced function in response to the storage controller accessing at least a
portion of a logical volume assigned to the particular advanced function, the
particular advanced function being assigned to at least a portion of a logical
volume;
a monitoring module configured to monitor the detected use of
the particular advanced function on the storage controller according to the
monitoring routine, the monitoring routine defining one or more alert
thresholds associated with the advanced function; and
an alert module configured to generate one or more alerts based
on one or more of the monitored use and a user attempting to use an
advanced function,
wherein the alert module generates an alert in response to the
storage controller reaching an alert threshold for the advanced function
defined by the monitoring routine.
2
Appeal2017-007569
Application 12/834,665
Claims 1 and 3-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Dec. 7, 2016), the Reply Brief ("Reply Br.," filed Apr. 17,
2017), and the Examiner's Answer ("Ans.," mailed Feb. 16, 2017) for their
respective details.
ISSUES
Is the claimed invention directed to a judicial exception, specifically
an abstract idea, without reciting significantly more so as to transform the
invention into a patent-eligible application of the abstract idea?
PRINCIPLES OF LAW
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. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
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Application 12/834,665
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "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 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
ANALYSIS
ALICE STEP 2A-ABSTRACT IDEA
Appellants argue that the claims are not directed to the abstract idea of
"monitoring detected use," as characterized by the Examiner. App. Br. 6.
Rather, Appellants assert that the claimed invention provides a specific
improvement to existing computer storage technology, specifically the
managing and monitoring of advanced functions used on a storage
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Application 12/834,665
controller. Appellants analogize their claimed invention to the invention at
issue in Enfzsh, 3 in which the court found that the claimed invention was
directed to a non-abstract idea.
We are not persuaded by Appellants that the claims do not recite an
abstract idea. Independent claim 1 recites "an apparatus for advanced
function monitoring" that variously recites identifying functions on the
storage controller; initializing a monitoring routine; detecting use of an
advance function; monitoring the detected use of the function; and
generating one or more alerts based on the monitored use. 4 The Examiner
more fully characterized the abstract idea expressed in the claims as
"monitoring use of a function of a storage controller by detecting use and
monitoring the detected use," and we agree with the Examiner's statement of
the abstract idea. Final Act. 2.
We are not persuaded by Appellants that the claims "provide a
specific improvement to existing computer storage technology" through the
mere monitoring of the use of certain functions, combined with generating
alerts once an alert threshold is reached. App. Br. 6. We find that the
claimed initializing, detecting, monitoring, and alerting does not amount to a
specific asserted improvement to the computer itself, but rather constitutes
the adaptation of an abstract idea (the monitoring of the use of various
functions) that invokes a computer merely as a tool. See Enfzsh, 822 F.3d at
1335-1336.
3 Enfzsh, LLC. v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
4 Independent claims 9, 17, and 19 recite analogous limitations.
5
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Application 12/834,665
We find, instead, that the claims under appeal are analogous to the
claims at issue in Electric Power Group. 5 In that case, the claimed invention
concerned a method of detecting events on an electric power grid, including
receiving a plurality of (specifically recited) data streams; detecting and
analyzing events in real-time from those data streams; displaying the event
analysis and diagnoses of events; accumulating and updating measurements;
and deriving a composite indicator of reliability. The court found that the
claims directed to monitoring, analyzing, and displaying data recited a
patent-ineligible abstract idea without sufficiently more to transform the
claimed invention into a patent-ineligible application of that abstract idea.
Elec. Power Grp., 830 F.3d at 1352. The court distinguished the claimed
invention from the invention in Enfzsh, which found a specific improvement
in "how computers could carry out one of their basic functions of storage
and retrieval of data." Enfish, 822 F.3d at 1335-36. "The focus of the
claims is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." Elec. Power Grp.,
830 F.3d at 1354.
The claims under appeal strongly resemble those in Electric Power
Group. Data is gathered ("initializing a monitoring routine," then
"monitoring a detected use of a function"), then analyzed and
displayed/reported ("providing an alert based upon said monitoring").
Because we do not find in the claims a specific asserted improvement in the
computer (here, the computer's storage device) as a tool, we agree with the
Examiner that the pending claims recite an abstract idea.
5 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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ALICE STEP 2B - INVENTIVE CONCEPT
We do not agree with Appellants that the elements of the claims,
when viewed as an ordered combination, amount to significantly more than
the abstract idea of detection, monitoring detected use, and providing alerts
based on that monitoring. App. Br. 10. Appellants have not established a
non-conventional and non-generic arrangement of elements under
BASCOM6 that would lead to a finding that "significantly more" is recited.
As found in Electric Power Group, limiting the generic detecting and
monitoring of the claims to a particular field, in this case storage controllers,
is insufficient to transform the claims into patent-eligible applications of the
abstract idea at their core. Id. at 1354. The claims do not require a new
source or type of information, or new techniques for analyzing it. Id. The
claims under appeal do not require any non-conventional computer,
monitoring, detection, or alerting components, or any non-conventional and
non-generic arrangement of known, conventional pieces. Id.
Because we are not persuaded by Appellants' arguments that the
Examiner erred, we sustain the Examiner's§ 101 rejection of claims 1 and
3-20.
CONCLUSION
The claimed invention is directed to a judicial exception, specifically
an abstract idea, without reciting significantly more so as to transform the
invention into a patent-eligible application of the abstract idea.
6 BASCOM Global Internet Servs., Inc. v. AT&T Mobility, LLC, 827 F.3d
1341 (Fed. Cir. 2016)
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Application 12/834,665
ORDER
The Examiner's decision to reject claims 1 and 3-20 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)(l )(iv).
AFFIRMED
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