Ex Parte Masrani et al

Patent Trial and Appeal Board

Jan 30, 2018

14267923 (P.T.A.B. Jan. 30, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/267,923 05/02/2014 PI YUS H BHARAT MASRANI B533 2113
152606 7590
VMWare - OPW
P.O. Box 4277
Seattle, WA 98194
EXAMINER
DUDEK JR, EDWARD J
ART UNIT PAPER NUMBER
2136
MAIL DATE DELIVERY MODE
01/30/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIYUSH BHARAT MASRANI, KUMAR GAURAV,
AMARNATH PALAVALLI, AKSHAY PRABHAKAR MIRAJKAR, and
NIKHIL DHANKANI1
Appeal 2017-007284
Application 14/267,9232
Technology Center 2100
Before MAHSHID D. SAADAT, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Applicant is VMWARE, INC.
2 According to Appellants, the real party in interest is VMWARE, INC.
App. Br. 1.
Appeal 2017-007284
Application 14/267,923
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to calculating the cost of logical
capacity containers in a virtual data center. Spec. 12. Claim 1 illustrates the
appealed subject matter and reads as follows:
1. A system for determining cost allocation for logical
containers run on a data-center infrastructure, the system
comprising:
one or more processors;
one or more data-storage devices; and
a routine stored in the data-storage devices and executed
using the one or more processors, the routine executing, for each
resource allocated to one or more logical containers,
calculating a resource allocation value for each of
the one or more logical containers, the resource allocation
value represents an amount of the data-center resource
allocated to the logical container;
calculating an allocated container cost for each of
the one or more logical containers based on the resource
allocation value of each logical container;
calculating a cost of unused portions of the data­
center resource for each of the one or more logical
containers based on the allocated container cost and the
resource allocation value associated with each logical
container; and
storing the resource allocation value, the allocated
container cost, and the cost of unused portion of the
resource in the one or more data-storage devices.
The Examiner’s Rejections
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 6-7.
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Application 14/267,923
Claims 1, 2, 5-8, 11-14, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Jung et al. (US 2015/0142524 Al; May 21, 2015).
Final Act. 8-11.
Claims 3, 4, 9, 10, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jung and Katiyar et al. (US 2012/0260248 Al; Oct. 11,
2012). Final Act. 12-17.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Action from which this
appeal is taken; and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the Examiner’s conclusions. We highlight the following additional
points.
Patent Ineligible Subject Matter
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101. In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), for “distinguishing patents that claim . . . abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim
nominally falls within one of the statutory categories of machine,
manufacture, process, or composition of matter, the first step in the analysis
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is to determine if the claim is directed to a law of nature, a natural
phenomenon, or an abstract idea (judicial exceptions). If so, the second step
is to determine whether any element or combination of elements in the claim
is sufficient to transform the nature of the claim into a patent eligible
application, that is, to ensure that the claim amounts to significantly more
than the judicial exception.
The Examiner rejected independent claim 1 as directed to patent-
ineligible subject matter because claim 1 is directed to calculating a resource
allocation value, calculating an allocated container cost, and calculating a
cost of unused portions of the resource. Final Act. 6. The Examiner states
these ideas amount to organizing information through mathematical
correlations, which the Examiner concludes is an abstract idea. Id. at 7. The
Examiner further concludes claim 1 does not recite any additional elements
sufficient to amount to significantly more than the judicial exception
because the recited processors and storage are generic elements performing
generic functions. Id. at 7.
Appellants argue the Examiner erred in rejecting claim 1 as directed
to patent-ineligible subject matter. App. Br. 4-15; Reply Br. 2-7.
Specifically, Appellants argue the Examiner’s rejection is conclusory,
merely reciting boilerplate without analyzing the claims under the relevant
authority. App. Br. 6-7. Appellants argue the claims are not directed to a
mathematical formula, instead the claims use mathematical formulas as a
concise way of describing scientific and computational instructions carried
out by a computer system. Id. at 8.
Appellants have not persuaded us of Examiner error. We agree with
the Examiner that claim 1 is directed to calculating a resource allocation
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Application 14/267,923
value, calculating an allocated container cost, and calculating a cost of
unused portions of the resource. Final Act. 6. Appellants’ argument that
claim 1 uses mathematical formulas, but is not directed to a mathematical
calculation is not persuasive because the claims recite mathematical
calculations to accomplish the goal highlighted by Appellants. Indeed, our
reviewing court has found similar claims that use mathematical calculations
to achieve some claimed or unclaimed goal to be directed to an abstract idea.
See Parker v. Flook, 437 U.S. 583 (1978) (mathematical algorithm used for
adjusting an alarm limit); Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350,
1353-54 (Fed. Cir. 2016) (collecting information and “analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category.”); In re Meyer, 688 F.2d 789, 795-96 (CCPA 1982) (claims
directed to identifying probable locations of malfunctions are “mathematical
algorithm representing a mental process that has not been applied to physical
elements or process steps”); Bilksi v. Kappos, 561 U.S. 593, 611 (2010)
(method by which commodities buyers and sellers could hedge, or protect,
against risk of price changes); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (method of verifying the validity of
credit card transactions the Internet); and Versata Develop. Grp., Inc. v. SAP
America, Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (finding that
determining a price using organizations and product group hierarchies is a
basic building block). Here, the claim involves nothing more than
performing three calculations and storing the result — an abstract idea. See
Elec. Power Grp., 830 F.3d at 1354.
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Moreover, the subject matter of the claims can be performed either
mentally or with “pencil and paper.” CyberSource, 654 F.3d at 1371. “A
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.” Id. at 1373. In this regard, the
claims are similar to the claims that the Federal Circuit determined are
patent ineligible in Electric Power, 830 F.3d at 1354 (collecting information
and “analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category”), OIP Tech., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based price optimization),
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (tailoring information presented to a user based on
particular information), Digitech Image Techs., LLC v. Elecs. For Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014 (employing mathematical algorithms to
manipulate existing information), Accenture Global Servs., GmbHv.
Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating
tasks in an insurance organization), and Versata, 793 F.3d at 1333—34
(price-determination method involving arranging organizational and product
group hierarchies). Accordingly, we agree with the Examiner that the claims
are directed to an abstract idea.
Regarding step two, the “inventive concept,” Appellants’ argument
that the claims are directed to calculations related to logical data containers
and are, therefore, necessarily rooted in computer technology is also
unpersuasive. Claim 1 recites “one or more processors,” “one or more data
storage devices” and “a routine stored in the data storage devices and
executed using the one or more processors.” Just as in Alice, “these
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Application 14/267,923
computer functions are ‘well-understood, routine, conventional activities],’
previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo,
132 S. Ct. at 1294); see also buySAFE v. Google, 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”);
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012) (a computer “employed only for its most basic
function . . . does not impose meaningful limits on the scope of those
claims”). The broadly recited computer implementation limitations of the
claims do little to limit their scope and do not change the nature of the
claims.
In addition, our reviewing court has “made clear that mere automation
of manual processes using generic computers does not constitute a
patentable improvement in computer technology.” Credit Acceptance Corp.
v. Westlake Svcs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in
Credit Acceptance, the focus of the claims is on the business practice (in this
case, calculating resource allocation costs), “and the recited generic
computer elements ‘are invoked merely as a tool.’” Id. (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see also Versata, 793
F.3d at 1334 (collecting cases). Accordingly, we agree with the Examiner
that the claims do not recite an “inventive concept” sufficient to transform
the claims from an abstract idea to a patent eligible application.
Finally, we are unpersuaded by Appellants’ argument that the claims
do not preempt every application of some abstract idea and are, therefore,
patentable. App. Br. 9-15. Lack of preemption does not make the claims
any less abstract. See buySAFE, 765 F.3d at 1355 (collecting cases);
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Accenture Glob. Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility”). Accordingly, we agree with the Examiner that the
claims do not recite an “inventive concept” sufficient to transform the
abstract idea into patent eligible subject matter.
For these reasons, we sustain the patent-ineligible subject matter
rejection of independent claims 1, 7, and 13, and dependent claims 2-6,
8-12, and 14-18, which Appellants did not argue separately. See App. Br.
15.
Anticipation
Appellants argue the Examiner erred in rejecting claim 1 as
anticipated by Jung. App. Br. 15-22; Reply Br. 7-10. In particular,
Appellants argue Jung is directed to calculating a price of a customized
virtual machine, where price refers to the amount of money to be paid to the
cloud service provider. App. Br. 16-17 (citing Jung 49-58). According
to Appellants, claim 1 is not directed to determining a price of a single
virtual machine, instead it is directed to determining the actual cost of
maintaining logical containers in a data center. Id. 18.
Appellants have not persuaded us of Examiner error. Jung discloses a
virtual machine server that operates a certain number of instances of virtual
machines. Jung 148. Jung further discloses calculating a total price “P” of
a customized virtual machine, where P is calculated using a cost per virtual
machine server, a cost corresponding to unused resources, and a cost
involved in maintaining the cloud network. Id. 49-58.
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Claim 1 recites, in relevant part, “calculating a resource allocation
value for each of the one or more logical containers, the resource allocation
value represents an amount of the data-center resource allocated to the
logical container.”
The Examiner finds, and we agree, Jung discloses determining the
price of a virtual machine, which, like claim 1, relates to the money required
for the resource. Ans. 16. We further agree with the Examiner that Jung’s
virtual machine corresponds to the claimed “logical container” because
Jung’s virtual machine is a logical entity that has resources, such as CPU
and memory, assigned to it. Id. Jung discloses determining a price, or cost,
associated with the amount of data center resources allocated to the virtual
machine. Jung || 49-58.
Appellants further argue Jung does not calculate the component costs
of its price calculation, instead retrieving them from memory. Reply Br. 9.
Appellants have not persuaded us of Examiner error. The Examiner finds,
and we agree, Jung discloses calculating the resource costs by retrieving
these values from a server. Ans. 17. Appellants have not provided
persuasive argument or identified persuasive evidence that the claimed
“calculating,” based on its broadest reasonable interpretation, precludes
retrieving this value from a server.
For these reasons, Appellants have not persuaded us the Examiner
erred in rejecting claim 1 as anticipated by Jung. We, therefore, sustain the
anticipation rejection of claim 1. We also sustain the anticipation rejection
of independent claims 7 and 13, and dependent claims 2, 5, 6, 8, 11, 12, 14,
17, and 18, for which Appellants do not offer separate arguments (App. Br.
22).
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Obviousness
Claims 3, 4, 9, 10, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jung and Katiyar. Appellants argue claims 3, 4, 9, 10,
15, and 16 are patentable for the same reasons as claim 1. For the reasons
set forth above, Appellants have not persuaded us of Examiner error. We,
therefore, sustain the obviousness rejection of claims 3, 4, 9, 10, 15, and 16.
DECISION
We affirm the Examiner’s rejection of claims 1-18 under 35 U.S.C.
§101.
We affirm the Examiner’s rejection of claims 1, 2, 5-8, 11-14, 17,
and 18 under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 3, 4, 9, 10, 15, and 16
under 35 U.S.C. § 103(a).
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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