Ex Parte Geheb et al

Patent Trial and Appeal Board

Jun 11, 2018

14341310 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/341,310 07/25/2014 Adam C. Geheb
52021 7590 06/13/2018
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. CONFIRMATION NO.
CAM920140013US1_8150-0507 4081
EXAMINER
SOLTANZADEH, AMIR
ART UNIT PAPER NUMBER
2197
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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM C. GEHEB, PRASANNA R. JOSHI,
andAPURVA S. PATEL
Appeal2018-000272
Application 14/341,310
Technology Center 2100
Before DENISE M. POTHIER, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 8-21, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2018-000272
Application 14/341,310
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
computer program development, and more specifically to implementing
changes in a computer program. See generally Spec. 1. Claim 8 is
exemplary:
8. A system, comprising:
a processor programmed to initiate executable operations
compnsmg:
identifying a fix defining at least one unique change to at
least a portion of a computer program;
applying the fix, including the plurality of unique
changes, to the computer program to generate a test version of
the computer program and, as each of the plurality of unique
changes is applied, identifying, in real time, program code units
in the computer program changed by the unique changes and
generating corresponding data entries in a first data structure;
determining a number of test cases available to test the
program code units in the computer program changed by the
unique changes by accessing the data entries in the first data
structure and matching each of the program code units to
corresponding data entries contained in a second data structure
that correlates program code units to test cases;
responsive to determining the number of test cases
available to test the program code units in the computer
program changed by the unique changes, automatically
generating a test readiness index indicating a readiness of the
fix to be tested, the test readiness index based on a number of
unique changes to the computer program defined by the fix and
the number of test cases available to test the unique changes to
the computer program defined by the fix; and
outputting the test readiness index.
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Application 14/341,310
Rejection1
Claims 8-21 stand rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in finding claims 8-21 are directed to
patent-ineligible subject matter. See Appeal Brief filed March 27, 2017
("Appeal Br.") 10-23; Reply Brief filed October 9, 2017 ("Reply Br.") 2-9.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W]e 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, 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
1 The Examiner withdrew a non-statutory double patenting rejection of
claims 8-21. Ans. 2.
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Application 14/341,310
claim" into a patent-eligible application. . . . We have
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 that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and
the Alice step-two inquiry as looking more precisely at what the claim
elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014), the
Federal Circuit determines the claims are patent eligible under the Alice two-
step inquiry because "the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR Holdings, 773 F.3d at 1257. As a result, the
DDR court holds the claims are patent eligible because "the ... claims
satisfy Mayo/Alice step two." DDR Holdings, 773 F.3d at 1257.
Similar to the claims in DDR, the claims here are necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer program development. See claims 8-21; DDR
Holdings, 773 F.3d at 1257; see also Spec. 1-3. As a result, the claims are
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Application 14/341,310
patent eligible under the Alice step-two inquiry. See DDR Holdings, 773
F.3d at 1257.
In particular, the claims address the problem of errors in computer
programs. See claims 8-21; see also Spec. 1-3. To that end, the claims
provide an improved method for implementing changes in a computer
program to fix errors. See claims 8-21. For example, independent claim 8
recites:
a processor programmed to initiate executable operations
compnsmg:
identifying a fix defining at least one unique change ... ;
applying the fix . . . and, as each of the plurality of
unique changes is applied, identifying ... program code units in
the computer program changed by the unique changes and
generating corresponding data entries in a first data structure;
determining a number of test cases available to test the
program code units in the computer program changed by the
unique changes ... ;
responsive to determining the number of test cases
available to test the program code units in the computer
program changed by the unique changes, automatically
generating a test readiness index ... ; and
outputting the test readiness index.
Claim 8. Independent claim 15 is a method claim reciting similar steps.
Claims 9-14 and 16-21 depend on claims 8 and 15, respectively, and
include all of the detailed functions or steps recited in their base independent
claims. Contrary to the detailed computer program development functions
or steps discussed above, the Examiner incorrectly determines the claims
merely (i) perform genetic computer functions (Final Office Action dated
October 20, 2016 ("Final Act.") 2-3, 10; the Examiner's Answer dated
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Application 14/341,310
August 9, 2017 ("Ans.") 6, 12, 15), (ii) are directed to arranging numbers or
interpreting numbers, and (iii) constitute mathematical algorithms or
mathematical computations (Final Act. 2, 10; Ans. 3--4, 7-10, 13).
Further, the Examiner's finding that the limitation "outputting the test
readiness index" of claim 8 was known in the art (Ans. 5) does not show
why the claims are not patent eligible under the Alice step-two analysis. See
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than
recognizing that each claim element, by itself, was known in the art. As is
the case here, an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces.").
Instead of adhering to the conventional way of computer
development, the claims provide an improved method of implementing
changes in a computer program to fix errors. See claims 8-21; DDR
Holdings, 773 F.3d at 1258-59. Therefore, similar to the claims of DDR and
contrary to the Examiner's assertion (Final Act. 2-3, 10; Ans. 6, 12, 15),
"[ w ]hen the limitations of [this invention] are taken together[], the claims
recite an invention that is not merely the routine or conventional use of'
general-purpose computers. See claims 8-21; DDR Holdings, 773 F.3d at
1259.
Finally, "[i]t is also clear that the claims at issue do not attempt to
preempt every application of the idea of' fixing computer-program errors.
"Rather, they recite a specific way" based on the detailed steps discussed
above. DDR Holdings, 773 F.3d at 1259. As a result, the claims include
"additional features" that ensure the claims are "more than a drafting effort
designed to monopolize the [abstract idea]." Id. (citing Alice, 134 S.Ct. at
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Application 14/341,310
2357). In short, "the claimed solution amounts to an inventive concept for
resolving this particular" problem in computer program development,
rendering the claims patent eligible. Id.
Accordingly, we reverse the Examiner's rejection of claims 8-21
under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's decision rejecting claims 8-21 under
35 U.S.C. § 101.
REVERSED
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