Ex Parte Graves et al

Patent Trial and Appeal Board

Mar 30, 2018

11739839 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111739,839 0412512007 David Graves
56436 7590 04/03/2018
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.
82230698 1064
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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 DAVID GRAVES, ADRIAN JOHN BALDWIN,
YOLANTA BERESNEVICHIENE, PHILIPPE LAMY, and
SIMON KAI-YING SHIU
Appeal2017-000670 1
Application 11/739,8392
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-6, 11-19, and 21-27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Feb. 11, 2016) and Reply Brief ("Reply Br.," filed Oct. 12, 2016), the
Examiner's Answer ("Ans.," mailed Aug. 12, 2016) and the Final Office
Action ("Final Act.," mailed Sept. 24, 2015), and the Board's Prior Decision
("Prior Dec.," Mar. 5, 2015).
2 Appellants identify Hewlett Packard Enterprise Development LP as the
real party in interest. App. Br. 1.
Appeal2017-000670
Application 11/739,839
CLAIMED INVENTION
Claims 1, 15, and 22 are the independent claims. Claim 1, reproduced
below with bracketed annotations, is illustrative of the subject matter on
appeal:
1. A method comprising:
[(a)] receiving, by a computer, audit exceptions indicative
of instances of noncompliance of an information system under
evaluation relative to a policy or standard;
[ (b)] in response to receiving the audit exceptions,
consulting, by the computer, a remediation recommendation
database storing remediation recommendations, each
remediation recommendation to provide instructions to resolve
an associated condition that results in noncompliance of the
particular policy or standard should the condition occur;
[ ( c)] automatically identifying, from the remediation
recommendations stored in the remediation recommendation
database and by the computer, remediation recommendations
that are relevant to the audit exceptions and that indicate how to
correct conditions that caused the instances of noncompliance
indicated by the audit exceptions;
[(d)] automatically providing, by the computer, the
identified remediation recommendations to an automated
remediation utility to cause the automated remediation utility to
correct the conditions to bring the information system into
compliance with the policy or standard by which the information
system was under evaluation; and
[ ( e)] temporarily suppressing, by the computer, for a
predetermined time or until a predetermined event has occurred,
notification of an audit exception and associated remediation
recommendation when an associated priority is below a
predetermined threshold.
REJECTION
Claims 1, 3-6, 11-19, and 21-27 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
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ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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 (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 Corp., 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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
Here, in rejecting independent claims 1, 15, and 22 under 35 U.S.C.
§ 101, the Examiner analyzes the claim using this two-step analysis.
Final Act. 5-7; see also id. at 2-5; Ans. 2-9. More specifically, pursuant to
the first step, the Examiner determines the claim is directed to the abstract
idea of "identifying remediation recommendations for noncompliant systems
and providing those remediation recommendations to an automated
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remediation utility," which is a method of organizing human activities and
an abstract idea. Final Act. 6. The Examiner determines that the claims are
similar to claims involving comparing information and using rules to
identify that our reviewing court has held to be abstract. Id. (citing
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. App'x 950, 954
(Fed. Cir. 2014), cert. denied, 135 S. Ct. 58 (2014)). Turning to the second
step, the Examiner determines that the elements of the claim, considered
individually and as an ordered combination, do not amount to significantly
more than the abstract idea. Id. at 6-7. In particular, the Examiner
determines that the additional elements (e.g., processors, database, storage)
comprise generically recited computer, and the steps of receiving and
transmitting data are basic functions of a computer that are well-understood,
routine, and conventional. Id. at 6. The Examiner also determines that the
claims do not purport to improve the functioning of the computer or to
improve any other technology or technical field, does not transform an
article into another state or thing, and does not recite any unconventional
steps. Id.
Appellants argue that, in determining what claim 1 is directed to, the
Examiner oversimplifies and mischaracterizes independent claim 1.
App. Br. 8; Reply Br. 5-7. In particular, Appellants repeat limitations (a)
and (c}-(e), as recited in claim 1, and charges "[i]t is error for the Examiner
to characterize the subject matter of claim 1 as merely constituting
'comparing new and stored information and using rules to identify options."'
App. Br. 8. Appellants also assert that claim 1 is "significantly different
from the claim at issue in the non-precedential SmartGene decision." Id.
In this regard, Appellants contend that "the key to the finding in SmartGene
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Application 11/739,839
that the claim at issue is directed to patent-ineligible subject matter is that
the steps of the claim are routine steps that can be performed mentally by
humans (i.e., doctors)." Id. at 9. Yet, claim 1, "[u]nlike the claim in
SmartGene," "includes more than just routine steps that can be performed
mentally by humans," because it recites allowable subject matter under
§ 103. See id. (citing Board Dec. 11-12 (reversing the§ 103 rejection of
certain dependent claims, the subject matter of which is now recited in the
independent claims)). For similar reasons, Appellants take issue with the
Examiner's characterization of the claim as a "long-standing" method of
organizing human activities, asserting that at least one element of claim 1 is
not taught by the art of record. Id. at 10. Appellants' arguments do not
apprise us of error in the Examiner's step one analysis.
As set forth above, the Examiner determines that independent claim 1
is directed to "identifying remediation recommendations for noncompliant
systems and providing those remediation recommendations to an automated
remediation utility." Final Act. 6. We agree with the Examiner that this
characterization fairly represents the character of the claim as a whole.
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015) ("Under step one of Mayo/Alice, the claims are considered
in their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.").
For example, independent claim 1 recites the steps of: (a) receiving
audit exceptions, (b) consulting a remediation recommendation database
storing remediation recommendations, ( c) identifying relevant remediation
recommendations, ( d) providing the remediation recommendation, and
( e) temporarily suppressing notification of an audit exception and associated
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remediation recommendation when its priority is below a threshold.
Independent claim 1, thus, recites steps for providing remediation
recommendations that includes collecting data (e.g., limitation (a)),
analyzing the data (e.g., limitations (b) and ( c) ), and providing the results of
the collection and analysis (e.g., limitation (d) and (e)).
This concept is similar to other concepts that the courts have held to
be abstract ideas. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) ("[T]he decisional mechanism courts now apply
is to examine earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided."). For example, in Electric Power Group, the Federal Circuit held
that claims focused "on collecting information, analyzing it, and displaying
certain results of the collection and analysis" are directed to an abstract idea.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Stating that "[i]nformation as such is an intangible," the Federal
Circuit in Electric Power Group noted that the Federal Circuit has "treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Id. (internal citations omitted). The Federal Circuit pointed out that
"[i]n a similar vein, ... [it has] 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." Id.
at 1354.
Like the claims in Electric Power, the advance Appellants' claims
"purport to make is a process of gathering and analyzing information of a
specified content, then ... [transmitting] the results, and not any particular
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assertedly inventive technology," i.e., an abstract idea. Elec. Power Grp.,
830 F.3d at 1354. Moreover, instead of focusing on the technical
implementation details of these claimed functions, claim 1 recites no more
than the result of the functions. Such claims are drawn to an abstract idea
because they claim the desired functionality, not a particular way of
performing that function. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1258-59 (Fed. Cir. 2016). Appellants' claims manipulate data
but fail to do so in a non-abstract way. That the claims may recite a feature
that is novel and non-obvious does not "avoid the problem of abstractness."
Id. at 1263.
Appellants also argue that claim 1 is not directed to an abstract idea
because they recite "specific interactions among various physical entities,
including a computer, an information system that is under evaluation, a
remediation recommendation database, and an 'automated remediation
utility."' App. Br. 12. Yet, Appellants do not identify, and we do not see,
any parameters for these "specific interactions" dictating how any of the
interactions are performed. At best, claim 1 requires the use of generic
technological environment in which to carry about the recited abstract idea,
but that is not sufficient for patent eligibility. See In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (holding that, despite
reciting "concrete, tangible components," the claims were directed to an
abstract idea where the "physical components merely provide[ d] a generic
environment in which to carry out the abstract idea.").
In the Reply Brief, Appellants argue that claim 1 does not preempt the
concept of "comparing new and stored information and using rules to
identify options." Reply Br. 7-8. There is no dispute that the Supreme
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Court has described "the concern that drives [the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption." Alice Corp.,
134 S. Ct. at 2354. But, characterizing pre-emption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. "The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
Seeing no legal error in the Examiner's determination that the claims
are directed to an abstract idea pursuant to the first step of the
patent-eligibility analysis, we tum to Appellants' arguments under the
second step. Appellants argue that the Examiner erred in determining that
limitation ( e ), as recited in claim 1, does not include an inventive concept
sufficient to transform the subject matter of claim 1 into a patent-eligible
application. App. Br. 14 (citing Prior Dec. 11-12 (reversing rejection under
§ 103 of dependent claims reciting the subject matter of limitation (e)); see
also Reply Br. 10. However, eligibility under § 101 and obviousness under
§ 103 are separate inquiries. Affinity Labs, 838 F.3d at 1263. Although the
second step in the Mayol Alice 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
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significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355 (citation omitted).
Here, the claim 1 's limitation ( e) recites "temporarily suppressing, by
the computer, for a predetermined time or until a predetermined event has
occurred, notification of an audit exception and associated remediation
recommendation when an associated priority is below a predetermined
threshold." Yet, temporarily suppressing the notification when the audit
exception has a low priority is no more than an abstract data processing step,
which is insufficient to transform the abstract idea. See, e.g., Spec. 17:16-
18 (describing that notification of a relatively minor infraction may be
temporarily suppressed until higher priority issued are address or a
predetermined number of days have passed). The claim language does not
recite what is inventive about limitation ( e) or about the technology used to
perform the step, and Appellants have not pointed us to, and we do not see,
any portion of the Specification that fills this gap. Here~ Appellants do not
explain, and \Ve fail to see) how the implementation of limitation ( e) requires
something other than a generic "computer9 ~ performing vvell-understood~
routine and conventional computer functions, such as processing data.
Appellants argue that the claimed invention improves "the functioning
of an information system ... by addressing conditions that result in
noncompliance of a policy or standard." App. Br. 15; see also id. at 18 (the
claimed invention improves the field of information system management);
Reply Br. 10-11. Yet, the claimed solution, as described by Appellants,
improves a business process for complying with a policy or standard, and
does not result in an irnprovernent to the functioning of the cornputer itself
or to some other technology or technical field.
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Appellants asseii. that independent c1aims 15 and 22 are directed to
patent-eligible subject matter frff reasons similar to claim L App, BL 19.
Hmvever, we are not persuaded by any of arguments with respect to claim 1,
and thus, find these arguments equally unpersuasive with respect to c 1aims
15 and 22, Appellants do not separately argue any of the dependent claims.
Id. at 18-19.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that the claims are judicially excepted from
statutory subject matter. We, therefore, sustain the rejection of the claims
under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1, 3-6, 11-19, and 21-27 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) (2009).
AFFIRMED
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