Ex Parte Jain et al

Patent Trial and Appeal Board

Jun 29, 2018

13344596 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/344,596 01/05/2012
69316 7590 07/03/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Navendu Jain
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.
334111-US-NP 1051
EXAMINER
CHEN, GEORGE YUNG CHIER
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07 /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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NA VENDU JAIN, ISHAI MEN ACHE,
JOSEPH NAOR, and JONATHAN YANIV
Appeal2017-003237
Application 13/344,596 1
Technology Center 3600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Microsoft Technology Licensing, LLC and Microsoft
Corporation, as the real party in interest. App. Br. 3.
Appeal2017-003237
Application 13/344,596
Invention
Appellants disclose a method of scheduling computing resources
based on the job completion values associated with each respective
computing job. Abstract.
Representative Claim
1. A method at least partially performed via at least one data
processing apparatus, the method comprising:
obtaining, via at least one device processor of the at least one
data processing apparatus, a plurality of requests for execution
of computing jobs on one or more devices that include a
plurality of computing resources, the one or more devices
configured to flexibly allocate the plurality of computing
resources, each of the computing jobs including job completion
values representing a worth to a respective user that is
associated with execution completion times of each respective
computing job, the job completion values being received from
the respective users with the requests for execution as a
respective value function, each respective value function
specifying a plurality of respective values gained for each of the
respective users if the respective computing job is completed at
respective completion times corresponding to the respective
values; and
scheduling, via one or more device processors of the at least
one data processing apparatus, the computing resources based
on the job completion values associated with each respective
computing job, using a system objective of social welfare that
uses an approximation of a maximum aggregate value of the
obtained job completion values.
Rejection
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2-3.
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Application 13/344,596
FINDINGS AND CONTENTIONS
The Examiner concludes that claim 1, being directed to scheduling a
processor for tasks or optimizing the use of processor, is directed to an
abstract idea. Final Act. 2. In particular, the Examiner concludes that
"optimizing resource usage is a very old problem that is not deeply rooted in
software." Ans. 3. The Examiner finds the claimed invention is not directed
to a patentable improvement in computer technology because, even if the
claimed scheduling is used, operations still take the same amount of time to
complete. Id.
The Examiner further concludes that claim 1 requires no more than
generic computer functions and, therefore, lacks additional elements, or a
combination of elements, sufficient to amount to significantly more than the
underlying abstract idea. Final Act. 2-3; Ans. 3.
Appellants contend the Examiner erred because "the 'focus' of
independent claim 1 is on a 'specific asserted improvement in computer
capabilities,' and not 'on a process that qualifies as an "abstract idea" for
which computers are invoked merely as a tool.' " App. Br. 27. Appellants
argue, in particular, that compared with other scheduling techniques, the
claimed scheduling technique achieves:
benefits such as preventing fluctuations between high and low
utilization of computing resources, keeping computing
resources constantly utilized, fewer executions of
approximations (increased efficiency in approximations),
increased efficiency in scheduling of computing resources and
computing jobs, flexibility to allocate jobs a variable amount of
resources which may be exploited for more efficient utilization,
including resolving potential congestion (e.g., increased
flexibility).
Id. at 28 (citing Spec. i-fi-f 12, 13, 89-92, 97, 164, 205, 206).
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Application 13/344,596
Appellants further argue the Examiner fails "to acknowledge that, by
using the claimed invention, submitted jobs not only make more efficient
use of computer resources, but may in fact execute to completion sooner (or
later), given the new scheduling constraints clearly recited by the claims."
Reply Br. 1 7.
Appellants make similar arguments with respect to independent
claims 7 and 15, as well as with respect to dependent claims 3---6, 8-11, 16,
and 17. App. Br. 29--48. Appellants do not argue claims 2, 12-14, and 18-
20 separately.
ANALYSIS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2355 (2014). The Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
"from those that claim patent-eligible applications of those concepts." Id.
(citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66
(2012)). The evaluation follows a two-part analysis: (1) determine whether
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Application 13/344,596
the claim is directed to a patent-ineligible concept, e.g., an abstract idea; and
(2) if a patent-ineligible concept is present in the claim, determine whether
any element, or combination of elements, in the claim is sufficient to ensure
that the claim amounts to significantly more than the patent-ineligible
concept itself. See Alice, 134 S. Ct. at 2355. A claimed invention can be
found non-abstract if "directed to a specific implementation of a solution to
a problem in the software arts." Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016). An invention can also be found non-abstract if
"the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer"
technology. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014).
We do not find Appellants' arguments persuasive because, as the
Examiner correctly notes, the problem of resource optimization "is a very
old problem that is not deeply rooted in software." Ans. 3. It is insufficient
that the resources being optimized are "computing resources." Cf Prism
Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1017 (Fed. Cir.
2017) (non-precedential) (a method for controlling access to protected
computer resources was "directed to the abstract idea of 'providing restricted
access to resources"'), cert. denied, 138 S. Ct. 689 (2018). The problem of
allocating resources in an optimal manner does not specifically arise in
computer technology, but is, as the Examiner concludes, a "fundamental
economic principal" (Ans. 5) directed to managing finite resources in the
face of potentially excess demand.
Furthermore, the claimed method does not result in an improvement
in computer functionality itself. See Enfzsh, 822 F.3d at 1336. As the
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Application 13/344,596
Examiner correctly notes, jobs executed according to a schedule produced
using the claimed method would not take less time to perform. See Ans. 4.
Appellants' argument that "submitted jobs ... may in fact execute to
completion sooner (or later)" (Reply Br. 17) is unpersuasive because any
earlier completion using the claimed invention does not arise from improved
computer functionality (e.g., faster execution), but merely from higher-
priority jobs displacing lower-priority jobs. Cf Enfzsh, 822 F.3d at 1337
(the non-abstract claimed invention achieved benefits over conventional
databases "such as increased flexibility, faster search times, and smaller
memory requirements").
Appellants identify a number of potential benefits that could be
realized when using the claimed scheduling method. See App. Br. 24--26,
28. However, the claimed invention is not itself "directed to a specific
improvement to computer functionality." Enfish, 822 F.3d at 1338 (citing,
e.g., Gottschalk v. Benson, 409 U.S. 63 (1972)). Rather than being directed
to a particular computer architecture or to an improvement in the functioning
of a computer system, the claimed invention is directed merely to "the use of
generic computer components to carry out the recited abstract idea" of
scheduling computer resources. Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir. 2017).
For these reasons, we agree with the Examiner that claim 1 is directed
to an abstract idea.
We now tum to the second step of the Alice framework: "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
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than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 73).
On the record before us, Appellants in essence fail to dispute that the
claims are not significantly more than a patent-ineligible concept, but merely
make the conclusory statement that "the elements of claim 1 (discussed
above), considered both individually and as an ordered combination, are
sufficient to ensure that the claim as a whole amounts to significantly more
than the exception itself' (App. Br. 28), without specifically explaining why.
Thus, there is no controversy presented by Appellants for the second step of
Alice.
Filing a Board Appeal does not, unto itself, entitle Appellants to a de
nova review of all aspects of a rejection. If Appellants fail to present
arguments on a particular issue, the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection. Ex parte
Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (citing, inter alia,
Hyattv. Dudas, 551F.3d1307, 1313-14 (Fed. Cir. 2008) (the Board may
treat arguments Appellant failed to make for a given ground of rejection as
waived)).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and, for similar reasons, claims 2-20.
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DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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.
§ 41.50(±).
AFFIRMED
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