Ex Parte Merry et al

Patent Trial and Appeal Board

Sep 28, 2018

13915946 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/915,946 06/12/2013
39254 7590 10/02/2018
Barta, Jones & Foley, P.C.
(Patent Group - Microsoft Corporation)
2805 Dallas Parkway
Suite 222
Plano, TX 75093
FIRST NAMED INVENTOR
Matthew Merry
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.
339028-US-NP 7764
EXAMINER
KRAFT, SHIH-WEI
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
usdocket@microsoft.com
uspto@dockettrak.com
docket@bjfip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MERRY, MEHMET IYIGUN, JONATHAN
ELDRIDGE, MILOS KRALJ, LAWRENCE OSTERMAN, CODY
MILLER, SRIRAM SARDA, ZACHARY BROWN, and ARUN KISHAN
Appeal 2018-003301
Application 13/915,946
Technology Center 2100
Before JAMES R. HUGHES, JENNIFER L. McKEOWN, and JASON M.
REPKO, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-14. Claims 15-20 have been cancelled.
We affirm.
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 3.
Appeal 2018-003301
Application 13/915,946
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention is directed to "systems
and methods of pre-fetching data for applications in a computer system that
are terminated or suspended and may be pre-launched by the computer
system." Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method comprising:
associating, using a processing device, an application with
corresponding application data to be retrieved from a content
source remote from the computer system;
determining, using the processing device, a set of pre-fetch
conditions associated with previous pre-fetches for the
application;
determining, using the processing device, to pre-fetch the
application data based on the previous pre-fetches for the
application;
based on the set of pre-fetch conditions corresponding to
a pre-fetch policy, pre-fetching, using the processing device, the
application data from the content source;
storing, using the processing device, the application data
pre-fetched from the content source in a cache accessible by the
application;
gathering, using the processing device, success data to
measure the pre-fetching of the application data; and
dynamically changing, using the processing device, the
pre-fetch policy based on the success data.
THE REJECTIONS
The Examiner rejected claims 1-142 under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 6-13.
2 The Examiner's statement of rejection lists claims 1-17. See Final Act. 6.
We note that claims 15-1 7 are cancelled.
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The Examiner rejected claims 1-143 under 35 U.S.C. § 103 as
unpatentable over Petersen (US 2012/0023226 Al; pub. Jan. 26, 2012) and
Apacible (US 2008/0005736 Al; pub. Jan. 3, 2008). Final Act. 8-21.
ANALYSIS
THEREJECTIONUNDER35 U.S.C. § 101
Claims 1-14
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1-14 as directed to patent-ineligible subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts" (id.), for example, to an abstract idea. If
the claims are directed to one of the patent-ineligible concepts, 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, 134 S. Ct. at 2355 ( quoting Mayo, 132 S.
Ct. at 1297).
3 The Examiner's statement of rejection lists claims 1-17. See Final Act. 14.
We note that claims 15-1 7 are cancelled.
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Application 13/915,946
Under the first step of the eligibility analysis, the Examiner
determines that the claims are directed to the organization and comparison of
data that is an idea of itself and, as such, are directed to an abstract idea.
Final Act. 8. The Examiner identifies that the claims here are similar to
other cases that have been identified as an abstract idea, such as "obtaining
and comparing intangible data." Final Act. 8.
Appellants contend the claims require using a computer and, thus,
cannot be performed mentally. App. Br. 7. Appellants additionally argue
that the claims "can only occur within a computer" and improves "the
technology of computing itself by optimizing the quality and usefulness of
pre-fetched input data needed by applications running on the computer, that
are pre-fetched according to a set of pre-fetch conditions." Reply Br. 2.
According to Appellants, this is done through "gathering success data to
measure the pre-fetching of the application data and then dynamically
changing the pre-fetch policy based on the success data." Reply Br. 2-3.
Appellants maintain, then, that the claims "further the technology of
computing itself' and are patent eligible. Reply Br. 2-3.
We disagree. While Appellants place particular emphasis on the
dynamically changing limitation as improving the quality of the pre-fetched
application data, the claim does not improve the functioning of the computer
itself. Rather, as Appellants explains, the gathering and dynamically
changing steps merely collect and measure ( or compare) success data with
pre-fetched application data and, then, "dynamically change," or in other
words update, the pre-fetch policy. See Reply Br 3. Nowhere does
Appellants identify or persuasively explain any improvement to how the
computer functions.
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Application 13/915,946
We likewise disagree with Appellants' assertion that the claims here
are analogous to the claims in Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). There, the Court
determined that the claims "disclose[ d] a specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer." Core Wireless,
880 F.3d at 1362. The claims here are not directed to a similarly specific,
non-conventional process. Rather, as discussed above, the claims are
directed to gathering data, analyzing data, and updating data based on
success results. While this process is applied to pre-fetch data in the claims,
the computer is merely performing generic functions and, thus, the claims
are not directed to an improvement to how the computer functions. Further,
as the Examiner points out, the Specification notes that pre-fetching was
known and "typical" in many applications. See Final Act. 7-8 ( citing Spec.
,r,r 18-19).
As such, we agree with the Examiner that the claims are directed to an
abstract idea, namely the collection, organization, and comparison of data
and is an idea of itself. See Final Act. 8; see also Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)(concluding claims directed to
collection, analysis, and display of certain data are patent-ineligible); Smart
Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364 (Fed. Cir.
2017)( concluding claims collecting data, then analyzing and using data to
perform an action are patent ineligible); CyberSource Corp. v. Retail
Decisions Inc., 99 USPQ2d 1690 (Fed. Cir. 201 l)(determining that
obtaining and comparing intangible data is patent ineligible).
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Under step two of the eligibility analysis, The Examiner determines
that the claims do not include significantly more than the abstract idea.
Final Act. 9. Specifically, the Examiner explains
Independent claim 1 recites the additional limitations "using a
processing device" and "in a cache", which do not amount to
significantly more than the abstract idea. The claimed
"processing device" []encompasses all devices (see para. 33 of
Patent Publication 2014/0373032), which amounts [to] a generic
computer performing a generic computer function that does not
amount to significantly more than the abstract idea ....
Final Act. 9.
Appellants assert that the claims amount to significantly more than the
judicial exception. See App. Br. 7-10. Specifically, Appellants explain that
the "dynamically changing" step provides an
improvement to the technological field and the improvement in
the operation of the computer itself by the recited method, for
example, to improve usage of system resources, to improve the
present system, to "diagnose failures in the pre-fetch operation,"
and to "lower the condition for having a certain amount or level
of system resources."
App. Br. 8 ( citations omitted). According to Appellants, dynamically
changing the pre-fetch policy based on success data "may lead to
improvements for the present system" and "results[ s] in computer resource
usage improvement." Id. As such, Appellants maintain that the claims are
not merely applying an abstract idea to a computer. Id.
Additionally, Appellants allege that claim limitations are not generic,
well-understood, routine, and conventional. Reply Br. 7-8. According to
Appellants,
Just because an application already exists does not mean
that an **improvement to the operation of that application using
the techniques of the claimed invention** is somehow "generic,
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well-understood, routine and conventional in the field." Thus,
while applications that run on a smartphone, that may fetch data
using HTTP, can benefit from the **pre-fetching** of the
present invention, the fact that the present invention may
improve the operation of such "known applications, that use
known HTTP accesses to a server"' does not make the very
claimed improvements to running these applications according
to exemplary embodiments of the present invention "generic,
well-understood, routine and conventional in the field."
Reply Br. 7.
We find Appellants' arguments unpersuasive. Specifically, we agree
with the Examiner that the claims are directed to an idea of itself. For
example, the claims are directed to merely collecting (gathering), analyzing
( determining) and updating data ( dynamically changing). While the claims
additionally recite associating and prefetching application data steps, these
claims are generic computer functions and are insufficient to render the
abstract idea patent eligible. Namely, merely associating application data
for prefetching and prefetching application data are a well-known,
conventional, and routine process. See Final Act. 8 (citing Spec. ,r,r 18-19).
Appellants generally assert that the "inventive concept" of the claims
improve the functioning of the computer, but, as discussed above, any
persuasive support or explanation for this assertion is notably absent. As
such, we are not persuaded that the Examiner erred in determining the
claims do not add significantly more to the claimed abstract idea.
Accordingly, we affirm the Examiner's rejection of claims 1-14 as
directed to patent-ineligible subject matter.
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Application 13/915,946
THE REJECTION UNDER 35 U.S.C. § 103 BASED ON PETERSEN AND APACIBLE
Claims 1-14
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1-14 as unpatentable over Petersen and Apacible.
Appellants contend that Petersen fails to disclose the pre-fetching
based on the set of pre-fetch condition step, the gathering success data step,
and the dynamically changing the pre-fetch policy step," as required by
claim 1. Reply Br. 9; see also App. Br. 10-11. Appellants allege that
"Petersen does not describe pre-fetch conditions as to *what* to pre-fetch,
or **whether what was pre-fetched** for an application is application data
that was actually needed, useful, or actually used by the application, i.e., was
it a successful pre-fetching?" Reply Br. 9. Rather, according to Appellants,
The objective in Petersen is not to optimize the accuracy of
application data needed by a given application running on the
smartphone, and to pre-fetch it to avoid wait states once the
application is running, as in the claimed invention. Rather, in
Petersen, the objective is to minimize actual fetches, and when
fetches must be performed, to lump them together in a
multiplex connection to avoid network accesses redundancy.
Reply Br. 11. Appellants assert that Apacible, similarly "is concerned with
tracking whether or not an application will launch - not, once it does, how
well pre-fetching of application data was accomplished in terms of pre-
fetching conditions." Reply Br. 12. As such, Apacible does not cure the
deficiencies of Petersen.
We find Appellants' arguments unpersuasive. Namely, as the
Examiner points out, Appellants argue Petersen and Apacible individually
and do not consider the combination. Ans. 5. See In re Keller, 642 F.2d
413,426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
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Application 13/915,946
Cir. 1986)(finding that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references).
Petersen, for example, discloses
using user activity characteristics at a mobile device and server
activity characteristics of a host server to anticipate a future
activity session at the mobile device and transferring impending
content from the host server [to] the mobile device to pre-cache
content on the mobile device to support predicted data activity
for the future activity session that has been predicted.
Petersen Abstract; see also, e.g., Petersen ,r,r 128, 130 (describing tracking,
monitoring, and analyzing user activities for an application); ,r 133
( disclosing that "tracked user behaviors, activities, habits, tendencies" are
used to predict user behavior and future activity sessions and that
"[p ]redicted activity sessions can be used to facilitate data transfer to
optimize network use and can have the advantage of also enhancing user
experience with mobile applications/accounts."); ,r 37 (noting that the
prediction is for "the occurring of data access or the background data
access"); ,r 31 (stating that the prediction is used for pre-caching content). In
other words, tracked user activity, i.e. previous pre-caches of application
data, are used to predict future activity sessions, i.e. develop a set of pre-
fetch conditions corresponding to a pre-fetch policy for pre-fetching data for
future sessions. Final Act. 15-16; see also Ans. 6-7.
Apacible then generally teaches using a feedback mechanism that
takes into account accuracy of predictions and, thus, Apacible gathers
success data to dynamically change predictions. Final Act. 17-18; Ans. 7;
see Apacible ,r 60 ("In one implementation, the launch record and the
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transition table can be dynamically configurable based on a feedback
mechanism that takes into account the accuracy of the predictions .... ").
The Examiner reasonably explains the combination. Namely,
It is abundantly clear that the ability to capture accuracy of
predictions as taught by Apacible is used on the predictions of
Petersen to optimize predictive performance by ensuring that the
changes to the predictions based on the contextual clues and
monitoring of Petersen are based on previously accurate
predictions.
Ans. 7-8. The Examiner further reasons that the combination would have
been obvious at the time of the invention because a skilled artisan would
have recognized the benefit of enhancing accuracy and reducing volatility of
predictions. Id. As such, we are not persuaded of error in the Examiner's
determination.
Accordingly, we affirm the Examiner's rejection of claims 1-14 as
unpatentable over Petersen and Apacible.
DECISION
We affirm the Examiner's decision to reject claims 1-14.
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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