Ex Parte Kaufmann et al

Patent Trial and Appeal Board

Jun 28, 2018

13656193 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/656, 193 10/19/2012 Martin Kaufmann
52025 7590 07/02/2018
SAP SE c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST A VENUE
NEW CANAAN, CT 06840
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.
120258US01 1037
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
martin@BMTPATENT.COM
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN KAUFMANN, NORMAN MAY,
and DONALD KOSSMAN
Appeal2016-003426
Application 13/656, 193 1
Technology Center 3600
Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and DAVID J.
CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "methods and systems for modeling and
executing a benchmark" (Spec. ,r 1 ).
1 Appellants state the real party in interest is SAP SE (App. Br. 2).
Appeal 2016-003426
Application 13/656,193
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method comprising:
defining a plurality of benchmark component types, each
of the benchmark component types representing a meta model
defining a data model benchmark;
generating one or more instances of the plurality of
benchmark component types;
defining parameters associated with the plurality of
benchmark component types;
combining one or more of the generated instances of the
plurality of benchmark component types and the defined
parameters associated with the plurality of the benchmark
component types to form respective one or more benchmarks;
and
executing at least one of the respective one or more
benchmarks to evaluate a database instance.
Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter (Final Act. 5---6).
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Bromberg et al. (U.S. Patent 5,819,066) (Final Act. 6-22).
ISSUES
1. Did the Examiner err in concluding claims 1-20 are directed to
ineligible subject matter under § 101?
2. Did the Examiner err in finding Bromberg teaches or suggests
"defining a plurality of benchmark component types, each of the benchmark
component types representing a meta model defining a data model
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benchmark" and "combining one or more of the generated instances of the
plurality of benchmark component types and the defined parameters
associated with the plurality of benchmark component types to form
respective one or more benchmarks," as recited in independent claim 1 and
commensurately recited in independent claims 9 and 16?
ANALYSIS
35 USC§ 101
Section 101 defines patentable subject matter: "Whoever 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. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable" (Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted)). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas" (Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355
(2014)). "The inquiry often is whether the claims are directed to 'a specific
means or method' for improving technology or whether they are simply
directed to an abstract end-result" (RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326 (Fed. Cir. 2017)). A court must be cognizant that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and
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"describing the claims at ... a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to § 101
swallow the rule" (Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016)). Instead, "the claims are considered in their entirety to
ascertain whether their character as a whole is directed to excluded subject
matter" (Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
The Federal Circuit has identified several abstract ideas related to
database technology that are similar to the instant claimed invention.
Specifically, the Federal Circuit stated "not every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry,"
including a finding that "claims reciting an 'interface,' 'network,' and a
'database' are nevertheless directed to an abstract idea" (In re TL! Commc 'n
LLC Patent Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016) (citing Mortg.
Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324--25 (Fed.
Cir. 2016)). The Federal Circuit found the activity of "organizing and
accessing records through the creation of an index-searchable database,
includes longstanding conduct that existed well before the advent of
computers and the Internet" (Intellectual Ventures Iv. Erie Indem. Co., 850
F.3d 1315, 1327). The Federal Circuit has also held, with respect to
searching databases, that "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas" (Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016)).
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In contrast, the Federal Circuit has found claims that "are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database" are "directed to
an improvement of an existing technology ... achiev[ing] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements" (Enfzsh, at 1337 (citations
omitted)). However, to recite such an improvement, the claimed invention
must be focused on the database itself, and how the database is altered "in a
way that leads to an improvement in the technology of computer databases"
(Intellectual Ventures Iv. Erie Indem. Co., at 1328 (citing Enfish); see also
TL! Commc 'n, at 612).
In the second step of the Alice analysis, the Supreme Court has
indicated we must "consider the elements of each claim both 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)).
The Court has "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' (id. (quotation omitted)).
For computer-related technology, the Federal Circuit has held that a claim
may pass the second step 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) (e.g., "a challenge particular to
the Internet")).
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More specifically, the Federal Circuit has provided guidance
clarifying when claims reciting abstract ideas related to database technology
do not amount to significantly more than the judicial exception. The Federal
Circuit held the abstract idea of classifying and storing digital images in an
organized manner was not significantly more than an abstract idea because
"the recited physical components behave exactly as expected according to
their ordinary use" and the claimed invention "fails to provide the requisite
details necessary to carry out th[ e] idea" ( TL! Commc 'n, at 615). Moreover,
the Federal Circuit held the idea of creating an index, and using that index to
search for and retrieve data was not significantly more than the abstract idea
because "while the claims necessarily cabin the idea of categorical data
search and retrieval to a computer environment, the claimed computer
functionality can only be described as generic or conventional" (Intellectual
Ventures Iv. Erie Indem. Co., at 1329).
In contrast, the Federal Circuit held claims directed to database
technologies recite significantly more than the abstract idea "when the claim
limitations ... considered individually and as an ordered combination, ...
recited an invention that is not merely the 'routine and conventional use' of
technology" (Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1301---02 (Fed. Cir. 2016) (citing DDR Holdings and BASCOM Global
Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Additionally, the Federal Circuit held the ordered combination of the
claimed invention recited an inventive concept because "the distributed,
remote enhancement that produced an unconventional result-reduced
dataflows and the possibility of smaller databases," which represented "a
technical improvement over prior art technologies and served to improve the
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performance of the system itself' (Amdocs at 1302 (emphasis added); see
also BASCOM at 1352 ("an inventive concept can be found in the ordered
combination of claim limitations that transform the abstract idea of filtering
content into a particular, practical application")).
"Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts" (SAP Am., Inc. v. InvestPic, LLC, 890 F .3d 1016, 1020
(Fed. Cir. 2018)).
Here, for the first step, Appellants argue the Examiner "has not met
the burden of establishing a prima facie case that claims 1-20 are directed to
non-statutory subject matter" (App. Br. 5). Further, Appellants argue the
Examiner "fails to provide any concrete evidence on the record in support of
th[ e] rejection" (id.). The Examiner responds that the "Examiner reiterates
that the claims are drawn to a patent-ineligible abstract idea [and are] merely
requiring generic computer implementation" (Ans. 2). The Examiner relies
on the claim being "drawn to an abstract idea of databased benchmarking,"
(id.) and specifically, "an idea of itself' similar to "organizing information
through mathematical correlations" (id. at 3; see also Final Act. 3, 5---6).
The Federal Circuit treats "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" (Elec. Power
Grp., 830 F.3d at 1355). We agree with the Examiner that "with the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper" (Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)). In Intellectual Ventures Iv.
Symantec Corp., the Federal Circuit held the claimed filtering of email was
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the same abstract idea as the "long-prevalent practice for people receiving
paper mail to look at an envelope and discard certain letters, without opening
them, from sources from which they did not wish to receive mail based on
characteristics of the mail" (id. at 1314). Moreover, "[t]he list of relevant
characteristics could be kept in a person's head" (id.) The same is true here
where a human may mentally keep track of different benchmark
characteristics to evaluate a database instance (see Ans. 4). For example, if
an ordinarily skilled artisan wrote down definitions of benchmark
component types and their associated parameters (i.e., the defining steps as
in independent claim 1 and as commensurately recited in independent claims
9 and 16) and, used those definitions, in combination, to write one or more
instances of the benchmark component types (i.e., the generating and
combining steps in claim 1 and commensurately recited steps in claims 9
and 16), then the ordinarily skilled artisan would be able to execute at least
one of the benchmarks to evaluate a database instance (i.e., the executing
step in claim 1 and similarly recited steps in claims 9 and 16) (see also Ans.
4 "Examiner submits that. .. the invention as a whole can be done by a human
mentally or by pen and paper").
For the second step, Appellants argue that the claims recite
significantly more because "the claimed system and process does not tie up
all applications for 'database benchmarking' such that others cannot practice
them" (App. Br. 9). However, we agree with the Examiner (Ans. 2) that
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility" (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
"Where a patent's claims are deemed only to disclose patent ineligible
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subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot" (id.).
Appellants argue that the claims are significantly more than an
abstract idea because the system and process is "necessarily rooted in
database technology[,] and solves the technological problem of evaluating
database performance" (App. Br. 7-8). But as discussed above, we agree
with the Examiner that other than a generic "computer system," Appellants
fail to demonstrate that "the argued limitation cannot be performed mentally
by a human being" (Ans. 2--4) and, we are unpersuaded, therefore, that the
claims are necessarily rooted in computer technology. Further, Appellants
do not persuasively show that the claim limitations, when considered
individually and as an ordered combination, produce an unconventional
result or recite more than the routine and conventional use of technology
(Amdocs, 841 F.3d at 1301---02).
Accordingly, we sustain the Examiner's rejection under§ 101 of
independent claims 1, 9, and 16 and dependent claims 2-8, 10-15, and 17-
20, which Appellants do not argue separately (see App. Br. 4--9; 37 C.F.R.
§ 4I.37(c)(l)(iv)).
35 USC§ 102(b)
Appellants contend Bromberg fails to disclose
defining a plurality of benchmark component types, each of the
benchmark component types representing a meta model
defining a data model benchmark and
combining one or more of the generated instances of the
plurality of benchmark component types and the defined
parameters associated with the plurality of benchmark
component types to form respective one or more benchmarks,
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as recited in independent claim 1 and commensurately recited in
independent claims 9 and 16. More specifically, Appellants contend
"Bromberg merely describes customizing a benchmark test," but does not
disclose the disputed limitation (App. Br. 10). According to Appellants, the
Examiner has not provided evidence "that [Bromberg's] driver program 78
and/or processes 56, 58, 60 are 'instances of the plurality of benchmark
component types,"' (id. at 11 ). Appellants additionally contend Bromberg
fails to describe "both a plurality of benchmark component types each
representing a meta model defining a data model benchmark, and instances
of the plurality of benchmark component types" (App. Br. 11-12
( underlining omitted)).
The words of a claim are given their "plain meaning" unless that
meaning is inconsistent with the specification (see In re Zietz, 893 F.2d 319,
321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1372 (Fed. Cir. 2004)). The presumptive plain meaning may be
rebutted by Appellants by setting forth an alternate definition in the
specification (In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, in Appellants' Specification, benchmark component types are
defined as "a meta model that represents concept( s) of the benchmark"
(Spec. ,r 14). The Specification further describes benchmark component
types as including numerous different embodiments, including at least "an
artifact type" and "a 'meta-model' level" that "each define or specify a type
of component comprising the benchmark of data model 100" (id.).
Benchmark components may be "parameterized, stored, and reused" (id.).
Appellants' Specification further describes that the benchmark
component types "will each comprise a meta model" which may include one
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or more of: "a data definition model 110, a DDL (Data Definition Language)
tuning meta model 115, a data generator meta model 120, a database server
meta model 125, and a query set meta model 130" (id. ,r 15). Appellants'
Specification then describes that "benchmark component type data
definition 110 may provide abstract information regarding the schema
definition of workload data for individual benchmarks" (id. ,r 16). "[D]ata
definition 110 may describe aspects such as the tables, columns, data types,
and constraints of the data model" (id. (emphasis added)). The Specification
further describes "benchmark component type DDL tuning 115 may be
provided to further define or tune the (basic) data model specified by
benchmark component type data definition 11 O" (id. ,r 17). "[B]enchmark
component type data generator 120 may define a custom data generator that
establishes specific requirements" (id. ,r 21 ( emphasis added)). The
Specification continues "parameters may be defined or specified at the
abstraction level of the meta models 105. That is, parameters may be defined
when the benchmark component type(s) or artifact type(s) are defined" (id.
i124).
Bromberg relates to "database administration, and more particularly to
a benchmarking application and method for measuring the performance of a
database server" (Bromberg 1 :5-8). In particular, Bromberg discloses:
benchmarking application 2 may be customized to suit the
requirements of database environment 4 or a particular
benchmark test using one or more customizing components 80.
Customizing components 80 may operate in association with one
or more components of benchmarking application 2 external to
process 56 to provide a programmatic interface for customizing
benchmark application 2. Customizing components 80 may be
used to modify benchmark transaction profile 110. In one
embodiment, benchmarking application 2 is customized using
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custom1zmg components 80 of driver program 78 before
processes 56, 58, and 60 are generated
(id. at 7:52---64). Thus, Bromberg discloses customized definitions of
associated components representing a benchmark transaction profile, where
the modified benchmark transaction profile employs defined parameters
associated with the plurality of customized components.
The Examiner finds the benchmarking application of Bromberg
discloses "high level modeling and definition by including the driver
program used to customize the environment/test and the particular
customized components of the driver program" (Ans. 7 ( citing Bromberg,
5: 17-32, 7:52---64)). Bromberg describes "[b ]enchmarking application 2
includes a driver program 78 that may be customized to suit the
requirements of a particular database environment 4 or benchmark test,"
where "[ c ]ustomizing components 80 provide this capability" (Bromberg,
5:17-20).
The Examiner further finds "[t]he concept of generating the instances
of the benchmark component types is described in Bromberg where
particular processes are generated according to particular execution
parameters as distinct instantiations of the program" (Ans. 7). Bromberg
discloses:
Driver program 78 generates processes 56, 58, and 60 in
accordance with execution parameters 82. In one embodiment,
each process 56, 58, and 60 is a distinct instantiation of driver
program 78. Driver program 78 generates separate processes 56,
58, and 60 to represent each user 16, 18, and 20, respectively,
specified in execution parameters 82 by the NUM parameter.
Processes 56, 58, and 60 may be generated in accordance with
execution parameters 82 in any suitable manner. For example,
driver program 78 may read execution parameters 82 to
determine the number of processes 56, 58, and 60 that driver
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program 78 must generate to represent users 16, 18, and 20 in
accordance with the NUM parameter. In one embodiment, driver
program 78 passes execution parameters 82 to each generated
process 56, 58, and 60 as run-time arguments for use in
generating benchmark transactions for submission to database
server 14
(Bromberg at 5:33--49 ( emphasis added); Ans. 7). Thus, the distinct
instantiations of a plurality of generated processes, which are specified
according to customized benchmark execution parameters, define a
plurality of benchmark component types (Bromberg at 5:33--49; Ans.
7).
Thus, we are unpersuaded Broomberg' s plurality of instantiations of
processes employed by a driver program, using a plurality of benchmark
parameters, fails to disclose "defining a plurality of benchmark component
types, each of the benchmark component types representing a meta model
defining a data model benchmark," as recited in claim 1.
Furthermore, the Examiner finds Bromberg describes "how during
benchmark tests, 'processes 56, 58, and 60 combine to generate reproducible
and scalable benchmark transaction profiles for submission to database
server 14'; and ... ' [ c ]ollectively, as indicated by box, the SQL statements
embedded in benchmark modules 106 define a benchmark transaction
profile for the particular benchmark test"' (Final Act. 8 ( citing Bromberg,
4:21-28, 7:32--46)). As the Examiner sets forth, processes 56, 58, and 60
"may be generated in accordance with execution parameters 82 in any
suitable manner" (Ans. 7 (citing Bromberg 5:39--41)). Appellants have not
proffered sufficient evidence or argument to persuade us the Examiner's
findings are in error.
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We are, therefore, not persuaded Bromberg fails to teach "defining a
plurality of benchmark component types, each of the benchmark component
types representing a meta model defining a data model benchmark" and
"combining one or more of the generated instances of the plurality of
benchmark component types and the defined parameters associated with the
plurality of benchmark component types to form respective one or more
benchmarks," as recited in independent claim 1 and commensurately recited
in independent claims 9 and 16. Claims 2-8, 10-15 and 17-20 depend,
directly or indirectly, from independent claims 1, 9, and 16 and thus, fall
with independent claims 1, 9, and 16.
Accordingly, we sustain the Examiner's rejections under§ 102(b) of
independent claims 1, 9, and 16, and their dependent claims 2-8, 10-15, and
17-20.
DECISION
For the reasons above, we affirm the decision rejecting claims 1-20
under § 101 and we affirm the decision rejecting claims 1-20 under
§ 102(b).
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 4I.50(f).
AFFIRMED
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