Ex Parte MacDonald et al

Patent Trial and Appeal Board

Mar 22, 2018

13547796 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/547,796 07 /12/2012
106095 7590 03/26/2018
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 700
Dallas, TX 75201
FIRST NAMED INVENTOR
Wilson T. MACDONALD
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.
063170.9771 4360
EXAMINER
AMELUNXEN, BARBARA J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILSON T. MacDONALD, EITAN HADAR, and
STEVEN L. GREENSPAN
Appeal2016-003727 1
Application 13/547,7962
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 4---6, 8, 9, 12-14, 16, 17, 20-22, and24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Br.," filed July 20,
2015), the Examiner's Answer ("Ans.," mailed Dec. 4, 2015) and Final
Office Action ("Final Act.," mailed Feb. 12, 2015).
2 Appellants identify CA, Inc., as the real party in interest. Br. 5.
Appeal 2016-003727
Application 13/547,796
CLAIMED INVENTION
Appellants' claimed invention relates to "facilitating the provisioning
and consumption of event-based information." Spec. i-f 1.
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for accommodating prov1s10ning and
consumption of information, the method comprising:
receiving, from an information consumer, subscription
information comprising a request for information associated with
a complex event;
receiving information from a plurality of information
providers, the information comprising normalized metric data
and meta-data, the normalized metric data comprising metric
information collected from a sensor that has been normalized to
a Unified Service Model by a connector, the metric information
representing physical properties of an environment measured by
the sensor, and the meta-data comprising information that
describes the normalization of the metric information by the
connector;
deriving, by one or more processors, the information
associated with the complex event from the information received
from the plurality of information providers based on the
subscription information received from the information
consumer, the deriving comprising:
selecting from the normalized metric data, for each
information provider of the plurality of information
providers, a piece of normalized metric data that was
provided by the information provider and that is related to
the complex event, such that a plurality of pieces of
normalized metric data that are related to the complex
event are selected and the selected plurality of pieces of
normalized metric data includes at least one piece of
normalized metric data from each information provider of
the plurality of information providers; and
generating complex event data from the selected
plurality of pieces of normalized metric data by
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transforming and correlating the selected plurality of
pieces of normalized metric data, such that the information
associated with the complex event comprises the complex
event data;
storing the information associated with the complex event
in a memory device;
determining, for each of the plurality of information
providers, a first payment value based on the piece of normalized
metric data that was provided by the information provider, such
that a plurality of first payment values are determined;
determining a second payment value for the information
consumer based on the selected plurality of pieces of normalized
metric data used to generate the complex event data; and
transmitting the information associated with the complex
event to the information consumer.
REJECTIONS 3
Claims 1, 4---6, 8, 9, 12-14, 16, 17, 20-22, and 24 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1, 4, 8, 9, 12, 16, 17, 20, and 24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bursey (US 2009/0089078 Al, pub. Apr. 2,
2009), Stephen Tyler, delivery integrated IT management solutions, TECH.
BRIEF: INTEGRATION STRATEGY FROM CA TECHS., 2-15 (May 2011)
(hereinafter "Tyler"), and Blott (US 2004/0044622 Al, pub. Mar. 4, 2004).
Claims 5, 13, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bursey, Tyler, Blott, and Quinones (US 6,904,449 B 1, iss.
June 7, 2005).
Claims 6, 14, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bursey, Tyler, Blott, Quinones, and Infosys Techs., Ltd.,
3 The Examiner has withdrawn the rejections of the claims under 35 U.S.C.
§§ 112, first and second paragraphs. Ans. 3--4.
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7 SETLABS BRIEFINGS: CLOUD COMPUTING, 3-94 (Praveen B. Malla et al.,
eds., 2009) (hereinafter "SETLabs").
ANALYSIS
Non-Statutory Subject Matter
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
Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal citation and quotations
omitted).
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." Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
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"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016)
(internal citations omitted). Here, exemplary claim 1 recites a method for
accommodating provisioning and consumption of information. The method
performs the steps of receiving information, deriving information, storing
information, determining a first payment value, determining a second
payment value, and transmitting information. According to the
Specification, the inventors recognized that "events and subsequent changes
may be of interest to business owners or analysts interested by the
phenomena that caused the change, rather than the change itself." Spec.
i-f 16. For example, "businesses may not know ... what sensors and
monitored data the next generation of products may provide," making it
difficult for businesses to accurately predict consumers and/or products
interested in consuming the data. Id. i-f 17; see also id. i-f 20. Also,
"businesses may collect data that is valuable to other business[ es] and may
wish to easily monetize their data collections." Id. i-f 18. "In an evolving
landscape of inexpensive sensors ... and in a business environment that
requires real-time decisions to maintain competitive advantages," businesses
need a way to offer new data elements, provide detailed event information
regarding particular situations, and inform other businesses when significant
changes are detected. Id. i-fi-1 18, 21.
To address these business challenges, Appellants' invention offers
"complex event or situation detection and processing as a service" and "a
revenue model based on selling this service, and monetizing reusable
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complex situational roles." Id. i-f 22. In an agricultural industry
embodiment, a farm uses sensors gathering information, such as
temperature, soil pH, humidity, and wind speed, to monitor the viability of
its crops. Id. i-f 24. The information gathered from the sensors provides the
farms with information to determine the best crops to plant and helps
establish procedures to tend to the crops. Id. For example, a farm may not
water the crops when sensor information is used to predict and approaching
storm. Id. However, Appellants' claimed invention recognizes that this
information also may be of value to other nearby farms to predict local
growing or weather conditions. Id. The information also may be of use to
agricultural future traders to predict crop yields and set appropriate prices.
Id.
Therefore, we agree with the Examiner's determination that the claims
are directed to "providing information to information subscribers," which is
an abstract idea. Final Act. 5; Ans. 6. In our view, the claimed method for
providing information to an information consumer is not meaningfully
distinct from claims involving the collection, organization, manipulation, or
display of data that have been deemed patent-ineligible by the Federal
Circuit. 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
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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. Similar to the situation in Electric Power Group, 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 assertedly inventive technology," i.e., an abstract idea. Id.
The claims involve the same general steps of collecting, processing, and
presenting of information.
Appellants argue that the claims are not directed to an abstract idea.
Br. 17. Specifically, Appellants criticize the Examiner for oversimplifying
the claims, and repeat the language of claim 1. Id. However, Appellants do
not persuade us that the claims focus on a technological improvement, and
not a process that itself is abstract.
Turning next to step two of the framework, Appellants argue that,
even if claim 1 is found to be directed to an abstract idea, the recited
combination of elements amounts to significantly more than the abstract
idea. Id. at 17-18. Appellants assert that the combination of claim
limitations for "receiving information ... comprising normalized metric
data," and "transforming and correlating" this information to derive complex
event information "ultimately allows a subscribed consumer to obtain insight
into a complex event related to the physical properties of the environment
(e.g., a predicted crop yield that can be used to determine futures prices,
weather patterns that can be used to determine the future demand for water
in a region)." Id. at 18-19 (citing Spec. i-fi-f 16, 18, 19, 24). Appellants
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charge that "the holistic combination of the claimed functions produces a
concerted result (e.g., providing an aggregation of data from a plurality of
different sources tailored to a consumer's needs and/or desires) that is more
than a mere combination of such functions performed separately." Id. at 19.
Yet, this is the abstract idea itself. See Elec. Power Grp., 830 F.3d at 1355
("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").
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 function of [the abstract idea], not a particular way of performing the
function."' Move, Inc. v. Real Estate Alliance Ltd., 2017-1463, 2018 WL
656377, at *4 (Fed. Cir. Feb. 1, 2018) (quoting Affinity Labs, 838 F.3d at
1258) ("There is nothing in claim 1 that is directed to how to implement [the
abstract idea]. Rather, the claim is drawn to the abstract idea itself."). We
agree with the Examiner (see Final Act. 5; Ans. 5-9) that there is no
inventive concept in the individual claim limitations or their ordered
combination.
Appellants argue that "the deficient cited art of record" shows that the
claimed features are not well-understood or routine in the field. Br. 19; see
also id. at 20 (disputing that the claimed "processor" and "system" of
independent claims 9 and 17 do not perform generic computer functions that
are well-understood, routine, and conventional, because the Examiner does
not establish a prima facie obviousness rejection of the claims). However,
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although the second step in the Mayo/Alice framework is termed a search for
an "inventive concept," the analysis is not an evaluation of novelty or non-
obviousness. Instead, it is a search for "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 (internal citation omitted). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013).
Appellants additionally argue with respect to independent claims 9
and 17 that the claimed "processor" and "system" add significantly more to
the abstract idea. Br. 20. However, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice Corp., 134 S. Ct. at
2358).
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting any of the claims under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
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Obviousness
Independent Claims 1, 9, and 17, and Dependent Claims 4, 8, 12, 16, 20,
and 24
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1, 9, and 17 under 35 U.S.C. § 103(a) because
the combination of Bursey and Tyler does not disclose at least
selecting from the normalized metric data, for each
information provider of the plurality of information providers, a
piece of normalized data that was provided by the information
provider and that is related to the complex event, such that ... the
selected plurality of pieces of normalized metric data includes at
least one piece of normalized metric data from each information
provider of the plurality of information providers[,]
as recited in claim 1, and similarly recited in claims 9 and 17. Br. 42--43.
The Examiner relies on Bursey as disclosing the argued limitation. Final
Act. 15 (citing Bursey, Fig. 1, block 122, Fig. 2, block 224, Fig 10, block
1004, Abstract, i-fi-f 14, 18, 230, 287, 322, 378, and 385). We have reviewed
the cited portions of Bursey. Yet, we find nothing that discloses or suggests
the argued limitations.
Bursey relates to an enterprise geospatial intelligence service oriented
architecture (EGI-SOA) that provides a consumer with one or more tailored
products in response to either a dynamic request or a standing request by the
consumer. Bursey, Abstract. Service brokers 122 discover a relevant set of
web services that match a specified request. Id. i1287, Fig. 1. An EGI-SOA
comprises, among other components, event cloud 214 and complex event
processor (CEP) 224, which are connected through a complex event-driven
enterprise service bus (CED-ESB). Id. i1294, Fig. 2; see also id. at Fig. 10
(depicting CEP 1004 connected to even cloud 1012 via CED-ESB 1002).
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The CEP "filter[ s] the event cloud for patterns matching the defined event
template patterns." Id. i-f 304. Bursey describes filtering the event cloud "for
patterns" matching template patterns. But, filtering events to match patterns
does not disclose or suggest selecting at least one piece of normalized metric
data from each information provider of the plurality of information
providers, as required by claims 1, 9, and 1 7.
Paragraph 230 describes that a tailored product refers to a product
defined by a specification that includes variable parameters. The parameters
may be specified by a standing governance policy specified by a community
of interest (COI). In one example, Bursey describes producing "two
different ortho-image resultant products" when two different sources are
available, because one governance policy (COI "A") specifies data from a
"best available" source; whereas, another policy (COI "B") specifies data
from a particular source. See id. In other words, rather than using at least
one piece of normalized metric data from each information provider to
produce a single tailored product, Bursey describes using data from only one
source to create a first tailored product and data from only a second source
to create a second tailored product.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 9, and 17, and dependent claims 4, 8, 12, 16, 20,
and 24 under 35 U.S.C. § 103(a).
Dependent Claims 5, 6, 13, 14, 21, and 22
The Examiner's rejections of dependent claims 5, 6, 13, 14, 21, and
22 do not cure the deficiency in the Examiner's rejection of independent
claims 1, 9, and 17. Therefore, we do not sustain the rejections of dependent
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claims 5, 6, 13, 14, 21, and 22 under 35 U.S.C. § 103(a) for the same reasons
set forth above with respect to the independent claims.
DECISION
The Examiner's rejection of claims 1, 4---6, 8, 9, 12-14, 16, 17,
20-22, and 24 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1, 4---6, 8, 9, 12-14, 16, 17,
20-22, and 24 under 35 U.S.C. § 103(a) are reversed.
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).
AFFIRMED
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