Ex Parte Leroux et al

Patent Trial and Appeal Board

Aug 30, 2016

11744090 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111744,090 0510312007 Daniel D. Leroux
45544 7590 09/01/2016
HOFFMAN WARNICK LLC
540 Broadway
4THFLOOR
ALBANY, NY 12207
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.
CA920070025US 1 8131
EXAMINER
CASANOVA, JORGE A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL D. LEROUX, KIM D. LETKEMAN,
DUC N. LUU, and TAO WENG
Appeal2015-004752
Application 11/744,090
Technology Center 2100
Before RICHARD E. SCHAFER, DEBORAH KATZ, and HUNG H. BUI,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Non-Final Rejection of claims 1-22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the Real Party in Interest is International
Business Machines Corporation. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief, filed December 9, 2014
("App. Br."); Reply Brief, filed March 19, 2015 ("Reply Br."); Examiner's
Answer, mailed January 23, 2015 ("Ans."); Non-Final Office Action, mailed
July 18, 2014 ("Non-Final Act."); and original Specification, filed May 3,
2007 ("Spec.").
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Application 11/744,090
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention relates to a model identity realignment
algorithm designed to align models, i.e., allow models with similar
structures but substantial identity differences to be aligned such that all
similar elements have the same identity. Spec. i-f 4. According to
Appellants, the algorithm allows any two models to be aligned and causes
these models to appear to have come from a common ancestor. Once the
two models are aligned, these models can merge and participate in a normal
development work flow to eliminate trivial differences. Id. and Abstract.
Claims 1, 8, 15, and 22 are independent. Claim 1 is illustrative of
Appellants' invention and is reproduced with disputed limitations
emphasized below:
1. A method for performing version control for a
model, comprising:
selecting, using a processor device, a descendant model
to be aligned;
selecting, using the processor device, an ancestor model
to serve as a baseline set of identities;
changing, using the processor device, an identifier of the
descendant model to match an identifier of the ancestor model
such that the descendant model will be subsequently treated to
have been derived from the ancestor model;
creating, using the processor device, a database of
matching keys with new identities by iterating the ancestor
model, wherein the database includes an entry for each element
in the ancestor model, and wherein each matching key is
generated based on a type of the element; and
aligning, using the processor device, elements of the
descendant model with corresponding elements of the ancestor
model using the database, wherein the aligning includes:
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Application 11/744,090
iterating the descendant model and generating a
matching descendant key for each element of the
descendant model;
searching the database for the matching descendant
key for each element of the descendant model; and
changing the identifier of each element of the
descendant model to match the identifier of a
corresponding similar element in the ancestor model.
App. Br. 11 (Claims App).
Examiner's Rejection
Claims 1-22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject. Non-Final Act. 3.
ANALYSIS
With respect to independent claims 1, 15, and 22, the Examiner finds
these process claims are directed to an abstract idea of "performing version
control for a model by aligning an ancestor and descendant model." }Jon=
Final Act. 3. The Examiner also finds additional elements recited in these
claims do not amount to significantly more than the abstract idea itself. Id.
According to the Examiner, any reference to "computer-implemented" using
a "processor" to implement the abstract idea does not transform the abstract
idea into a patent eligible subject matter under 35 U.S.C. § 101. Id.
Appellants contend "the claimed invention is directed to more than
that broad concept [of performing version control for a model by aligning an
ancestor and descendant model], but to a novel and nonobvious approach to
performing version control." App. Br. 7. Appellants also argue "the
claimed invention is not trying to preclude others from performing version
control" but instead "only seeks to obtain protection for a unique approach
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Application 11/744,090
to performing version control" and, as such, is not an abstract idea because
"it does not seek a monopolization of the concept of performing version
control." Id. at 8 (citing US PTO' s memorandum on preliminary
examination instructions issued on June 25, 2014, in view of the Supreme
Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347
(2014)).
Appellants further argue the additional elements or steps recited in the
process claims 1, 15, and 22, such as "changing an identifier of the
descendant model to match an identifier of the ancestor model" and
"creating a database of matching keys with new identities by iterating the
ancestor model" constitute "significantly more" than an abstract idea
because these steps add "a specific limitation other than what is well-
understood, routine and conventional in the field" or "unconventional steps
that confine the claim to a particular useful application." Reply Br. 2-3.
Finally, Appellants argue "the claimed invention [also] qualifies as
patentable subject matter as being directed to a process that is tied to a
particular machine or apparatus." Id. at 3 (citing In re Bilski,3 545 F.3d 943,
954 (Fed. Cir. 2008) (en bane)).
3 In In re Bilski, the Federal Circuit adopted a "machine-or-transformation"
(MoT) test to determine whether a process claim is eligible under 35 U.S.C.
§ 101. However, the Supreme Court held, in Bilski v. Kappas, 130 S. Ct.
3218, 3227 (2010), that the "MoT" test, while a "useful and important clue,"
is no longer the sole test for determining the patent-eligibility of process
claims under§ 101. Since Bilski v. Kappas, the Supreme Court has created a
two-step framework in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct.
2347, 2354 (2014) to address whether a claim falls outside of§ 101, which
we will discuss herein.
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We are not persuaded by Appellants' arguments. The Supreme Court
has long held that "[l]aws of nature, natural phenomena, and abstract ideas
are not patentable." Alice, 134 S. Ct. at 2354 (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal
quotation marks omitted)). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S.Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in the analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts," such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims "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, 132 S. Ct. at 1298, 1297). In other words, the second step is
to "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.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that claims 1, 15, and 22 are directed to a patent-ineligible abstract
concept of "performing version control for a model by aligning an ancestor
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and descendant model." Non-Final Act. 3. All the steps recited in
Appellants' claims 1, 15, and 22, including, for example: (i) "selecting" an
ancestor model and a descendant model, (ii) "changing ... an identifier of
the descendant model," (iii) "creating ... a database of matching keys" and
(iv) "aligning" elements of the descendent model with corresponding
elements of the ancestor model, are abstract processes of collecting, storing,
and analyzing information of a specific content. Information as such is an
intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12
(2007). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
Turning to the second step of the Alice inquiry, we find nothing in
claims 1, 15, and 22 that adds anything "significantly more" to transform the
abstract concept of collecting, storing, and analyzing information into a
patent-eligible application. Alice, 134 S. Ct. at 2357. Appellants do not
argue each of the steps of (i) "selecting" an ancestor model and a descendant
model, (ii) "changing ... an identifier of the descendant model," (iii)
"creating ... a database of matching keys" and (iv) "aligning" elements of
the descendent model with corresponding elements of the ancestor model, is
individually inventive. None of Appellants' arguments show that some
inventive concept arises from the ordered combination of these steps, which,
even if true, would be unpersuasive given that they are ordinary steps in data
analysis and are recited in the ordinary order. Instead, claims 1, 15, and 22
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simply incorporate a general-purpose computer to perform the abstract
concept of "performing version control for a model by aligning an ancestor
and descendant model," i.e., collecting, storing, and analyzing information.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), Bilski's "machine-or-
transformation" (MoT) test can provide a "useful clue" in the second step of
the Alice framework. Under Bilski 's "MoT" test, a claimed process is
patent-eligible under § 101 if: (1) it is tied to a particular machine or
apparatus; or (2) it transforms a particular article into a different state or
thing. Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S. at 70). However,
Appellants' process claims 1, 15, and 22 are neither sufficiently "tied to a
particular machine or apparatus" nor involved in any type of transformation
of any particular article. 4
For example, limiting such an abstract concept of "performing version
control for a model by aligning an ancestor and descendant model" to a
general purpose computer recited in Appellants' claims 1, 15, and 22 does
not make the abstract concept patent-eligible under 35 U.S.C. § 101. Ans. 3.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2359 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" not patent eligible); see
4 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent's media claims. 135 S. Ct. at
2360.
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also Ultramercial, 772 F.3d at 715-16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013) (claims reciting "generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("Simply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible" (internal citation omitted)).
Because Appellants' process claims 1, 15, and 22 are directed to a
patent-ineligible abstract concept, we sustain the Examiner's rejection of
these claims and corresponding system claim 8 as well as respective
dependent claims 2-7, 9-14, and 16-21under35 U.S.C. § 101 as being
directed to non-statutory subject matter.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-22 under 35 U.S.C.
§ 101.
DECISION
As such, we AFFIRM the Examiner's§ 101 rejection of claims 1-22.
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).
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AFFIRMED
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