Ex Parte Fortune et al

Patent Trials and Appeals Board

Apr 18, 2019

14662731 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/662,731 03/19/2015
59978 7590 04/22/2019
Chiesa Shahinian & Giantomasi PC (NOKIA)
Attn: Jeffrey M. Weinick
One Boland Drive
West Orange, NJ 07052
FIRST NAMED INVENTOR
Steven J. Fortune
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.
817497-US-NP 7745
EXAMINER
SCHELL, JOSEPH 0
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
04/22/2019 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):
patent@csglaw.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. FORTUNE and JOHN HOBBY
Appeal2018-005445
Application 14/662, 731
Technology Center 2100
Before J. JOHN LEE, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 3-9, and 11-20. Claims 2 and 10
have been canceled. See App. Br. 22-26 (Claims Appendix). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm, designating our affirmance as including a new ground of
rejection within the provisions of 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Alcatel-Lucent USA
Inc. App. Br. 1.
Appeal2018-005445
Application 14/662,731
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "providing a scripting
language, scripting-language environment and methodology that allows
troubleshooting scripts to self-tune thereby optimizing troubleshooting
actions responsive to a particular troubleshooting issue." Spec. ,r 1.
Claim 1, which is illustrative, reads as follows:
1. A computer-implemented method for executing a
workflow, the method comprising:
determining an execution history for one or more of a
plurality of chunks of the workflow, each chunk of the plurality
of chunks defining at least a single action of the workflow, and
defining at least one of the plurality of chunks as a semantic
structure that includes a gate, an action, and a verification using
one or more commands of a scripting language, wherein the
workflow is defined by one or more troubleshooting scripts and
associated with at least one of a hardware type, a service type
and a customer support level;
determining at least one ordered set of chunks from the
plurality of chunks using the execution history of the plurality
ofchunks;and
executing the at least one ordered set of chunks.
Rejection
Claims 1, 3-9, and 11-20 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patent
eligibility under§ 101. Final Act. 4--5.
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ANALYSIS
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
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Application 14/662,731
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
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"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
OuRREvrnw
Appellants do not substantively argue the claims separately, but
instead rely on the same arguments for all claims. App. Br. 18-20. In
accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select independent claim 1
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as the representative claim. Remaining claims 3-9 and 11-20 stand or fall
together with claim 1.
STEP]
Under "Step 1" of the analysis, we determine whether the claimed
subject matter falls within the four categories of patentable subject matter
identified by 35 U.S.C. § 101. Memorandum, 84 Fed. Reg. at 53-54.
Claim 1 is directed to a method and, therefore, falls within the four
categories of patentable subject matter-a process.
STEP 2A, PRONG ONE
Under "Step 2A, Prong One" of the analysis, we determine whether
the claim recites a judicial exception. Memorandum, 84 Fed. Reg. at 54.
Claim 1 recites, among other things, the limitations of "determining an
execution history for one or more of a plurality of chunks of the workflow"
and "determining at least one ordered set of chunks from the plurality of
chunks using the execution history of the plurality of chunks." These
limitations, as drafted, are processes that, under their broadest reasonable
interpretation, cover performance of the limitations in the mind or by a
human using pen and paper. For example, the limitations encompass a user
manually calculating the number of times execution of each chunk resulted
in resolution of a particular issue and mentally determining the ordered set
of chunks based on the calculation. These limitations, therefore, recite
mental processes. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372-73 (Fed. Cir. 2011) ("[A] method that can be performed by
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human thought alone is merely an abstract idea and is not patent-eligible
under [section] 101. ").
STEP 2A, PRONG Two
Under "Step 2A, Prong Two," we determine whether the claim as a
whole integrates the recited judicial exception into a practical application of
the exception. Memorandum, 84 Fed. Reg. at 54. Claim 1 recites the
following additional elements:
each chunk of the plurality of chunks defining at least a single
action of the workflow, and defining at least one of the plurality
of chunks as a semantic structure that includes a gate, an action,
and a verification using one or more commands of a scripting
language, wherein the workflow is defined by one or more
troubleshooting scripts and associated with at least one of a
hardware type, a service type and a customer support level
[and]
executing the at least one ordered set of chunks.
App. Br. 22 (Claims Appendix). We determine these additional limitations
fail to integrate the judicial exception into a practical application. For
example, the claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine ( except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and ( 4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See Memorandum, 84
Fed. Reg. at 54--55; MPEP §§ 2106.05(a}-(c), (e}-(h).
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The additional limitation "each chunk of the plurality of chunks
defining at least a single action of the workflow, and defining at least one of
the plurality of chunks as a semantic structure that includes a gate, an action,
and a verification" and the limitation requiring each of the plurality of
chunks to be defined "using one or more commands of a scripting language,
wherein the workflow is defined by one or more troubleshooting scripts and
associated with at least one of a hardware type, a service type and a
customer support level" are details of implementing the recited mental
processes on a computer. The Specification does not provide a detailed
description as to how the recited mental processes are implemented on a
computer but indicates that implementation is generic (Spec. ,r 6 ( describing
existing troubleshooting scripts as "typically described in a special-purpose
programming language known as a scripting language or script language"
and that the scripting language "provide[ s] the usual programming features
(e.g., variables, conditionals, semantics, control structure, etc.")); ,r,r 45--48
( describing the invention as being implemented on a generic computer
comprising generic computer components)).
The claimed "executing" limitation is a form of insignificant post-
solution activity insufficient to integrate the recited abstract ideas into a
practical application. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) ("Adding routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet does not transform an
otherwise abstract idea into patent-eligible subject matter.").
We are also not persuaded by Appellants' argument that "the claimed
embodiments have a significant technical effect and overcome several
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Application 14/662,731
technical hurdles ( e.g., improved troubleshooting resolution speed and
accuracy, and increased specialization and tuning of
workflows/troubleshooting scripts)." App. Br. 12. Appellants' claims do
not go beyond generic functions, and there are no technical means for
performing the claimed steps that are arguably an advance over conventional
computer technology. See Elec. Power Grp., LLC v. Alstom S.A., 830 F .3d
1350, 1351 (Fed. Cir. 2016). For example, claim I merely requires that the
method is "computer-implemented," and the processor recited in claim 9 and
the non-transitory computer-readable medium recited in claim 18 are
described and claimed generically rather than with the specificity necessary
to show how those components provide a technical improvement to
computer technology.
We disagree with Appellants that the claims are similar to the claims
in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). App.
Br. 14--16. In Enfish, the court noted that "[s]oftware can make non-abstract
improvements to computer technology just as hardware improvements
can[.]" Enfish, 822 F.3d at 1335. The court put the question as being
"whether the focus of the claims is on [a] specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Id. at
1335-36. In Enfish, the court found that the "plain focus of the claims"
there was on "an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity." Id. at 1336. Therefore, we look to whether the claims focus on a
specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea, and merely
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invoke generic processes and machinery. See Enfish, 822 F.3d at 1336.
Here, the plain focus of the claims is not an improvement to computer
functionality itself, but instead on other tasks for which a computer is used
as a tool in its ordinary capacity.
We also disagree that the claims are similar to the claims in McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
The claimed improvement in McRO was to how the physical display
operated ( to produce better quality images), unlike ( what is present here) a
claimed improvement in a process for determining and executing an ordered
set ofworkflow chunks. Id. at 1313. The claims in McRO, thus, were not
directed to an abstract idea but rather to a technical improvement in the
underlying display technology. They also had the specificity required to
transform a claim from one claiming only a result to one claiming a way of
achieving it. Id. at 1314.
Similarly, in Thales Visionix Inc. v. United States, 850 F.3d 1343,
1348--49 (Fed. Cir. 2017), the improvement was in a system that uses inertial
sensors in a non-conventional manner to reduce errors in measuring the
relative position and orientation of a moving object on a moving reference
frame. The court found "[ w ]hile the claims utilize mathematical equations
to determine the orientation of the object relative to the moving reference
frame, the equations----dictated by the placement of the inertial sensors and
application of laws of physics-serve only to tabulate the position and
orientation information in this configuration." Id. at 1348. Here, the claims
do not recite the application of the recited mental processes to
unconventional computer technology, but rather the conventional use of
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generic computer components as tools to perform mental processes. See
Spec. ,r,r 45--48.
For the foregoing reasons, claim 1 is directed to a mental process, i.e.,
an abstract idea, and does not integrate the judicial exception into a practical
app li cation.
STEP2B
We next evaluate the claim under "Step 2B" to determine whether the
claim provides an "inventive concept" (e.g., recites significantly more than
the abstract idea). Memorandum, 84 Fed. Reg. at 56.
As recognized by the Memorandum, an "inventive concept" under
Alice step 2 can be evaluated based on whether an additional element or
combination of elements:
( 1) adds a specific limitation or combination of limitations
that is not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present.
See Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' claim that adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field. See Memorandum, 84 Fed. Reg. at 56. Claim 1 requires "executing
the at least one ordered set of chunks." The Specification provides that
"chunks are programmable fragments specific to workflows that enable
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automated analysis" (Spec. ,r 10) and describes the execution of the chunks
as being performed by conventional computer components performing
routine functions (See Spec. ,r,r 45--49). In accordance with the Supreme
Court's conclusion in Alice, 573 U.S. at 222-24, our reviewing court has
held "such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea." Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016) (internal quotation marks omitted) (citing
cases).
To the extent Appellants argue that the claims recite novel and non-
obvious subject matter and, therefore, recite significantly more than the
abstract idea (App. Br. 10-11), we find this argument unpersuasive.
Although the second step in the Alice/Mayo framework is termed a search
for an "inventive concept," the analysis is not an evaluation of novelty or
non-obviousness, but rather a search for "'an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
For the foregoing reasons, we ultimately agree with the Examiner's
conclusion that claims 1, 3-9, and 11-20 are directed to patent-ineligible
subject matter. However, as our reasoning departs from that of the
Examiner, we designate our affirmance of the Examiner's rejection as
including new grounds of rejection.
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DECISION
We affirm the Examiner's rejection of claims 1, 3-9, and 11-20 under
35 U.S.C. § 101, designating our affirmance as a new ground of rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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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; 37 C.F.R. § 4I.50(b)
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