Ex Parte Moharram

Patent Trial and Appeal Board

Nov 19, 2018

10668133 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/668,133 09/24/2003
68108 7590 11/21/2018
OMA YMA E. MOHARRAM
RR 1 STNMAIN
225 SPRUCE DRIVE
CARLETON PLACE, ON K7C-3Pl
CANADA
FIRST NAMED INVENTOR
Omayma El-Sayed Moharram
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.
OMCS-001-US 2018
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
omayma.moharram@gmail.com
omayma@storm.ca
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OMA YMA EL-SAYED MOHARRAM
Appeal2017-010364 1
Application 10/668,133 2
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, 10-19, 21-26, 40-45, and 47-51. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
April 17, 2017) and Reply Brief ("Reply Br.," filed July 31, 2017), and the
Examiner's Answer ("Ans.," mailed June 5, 2017) and Final Office Action
("Final Act.," mailed November 23, 2016).
2 Appellant identifies the inventor, Omayma E. Moharram, as the real party
in interest. App. Br. 3.
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Application 10/668,133
CLAIMED INVENTION
Appellant's claimed invention "relates generally to business tools and,
in particular, to [a] too 1 and method for [ determining an] operations,
management, capacity, and services (OMCS) business solution for a
telecommunications network" (Spec. ,r 1 ).
Claims 1 and 40 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer program product comprising a non-
transitory computer-readable medium having stored thereon
instructions for causing a computer to perform a process for
determining alternative management processes for managing
selected network architectures for a telecommunications
network, the computer program product comprising instructions
for:
(a) receiving data and options for various management
processes, which comprise network management processes and
service and customer management processes, for managing said
network architectures;
( d) selecting the network management processes and
the service and customer management processes for manual and
mechanized operations mode for managing said network
architectures,
wherein the network management processes comprise
processes having costs for the manual and mechanized
operations mode for each network element of said network
architectures, and
wherein the service and customer management processes
comprise processes having costs for the manual and mechanized
operations mode for each link of said network architectures;
( e) determining management processes costs, which
comprise a network management processes cost and a service
and customer management processes cost for the manual and
mechanized operations mode for each network element and link
of said network architectures; and
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computing the network management processes cost,
which comprises totaling the network elements for each of said
network architectures and the costs for the manual and
mechanized operations mode for each network element of said
network architectures; and the service and customer management
processes cost, which comprises totaling the links for each of
said network architectures and the costs for the manual and
mechanized operations mode for each link of said network
architectures;
(g) determining business parameters for the
telecommunications network based on the costs of the network
architectures, the network management processes cost, and the
service and customer management processes cost; and
comparing the business parameters for said network
architectures for determining the management processes costs
for reducing total expenditure; and
(h) storing and displaying the network management
processes and the service and customer management processes
for managing said network architectures, the costs for the
network architectures, the management processes costs, which
comprise the network management processes cost, and the
service and customer management processes cost, and the
business parameters for the telecommunications network.
REJECTIONS
Claims 1-8, 10-19, 21-26, 40-45, and 47-51 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1-8, 10-19, 21-26, 40-45, and 47-51 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 1-8, 10-19, 21-26, 40-45, and 47-51 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
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point out and distinctly claim the subject matter that Appellant regards as the
invention.
Claims 1-8, 10, 15-19, 21-26, 40-45, and 47-51 are rejected under
35 U.S.C. § I03(a) as unpatentable over Ngi et al. (US 2003/0158765 Al,
pub. Aug. 21, 2003) ("Ngi"), Bowman-Amuah (US 6,611,867 Bl,
iss. Aug. 26, 2003), and EURESCOM Project P90I-PF "Extended
investment analysis of telecommunication operator strategies"
("EURESCOM"): Deliverable 1: "Investment analysis framework definition
and requirements specification" ("D 1 "); Deliverable 2: "Investment Analysis
Modeling" ("D2").
Claims 11-14 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Ngi, Bowman-Amuah, EURESCOM, and Arbel et al.
(US 2004/0008673 Al, pub. Jan. 15, 2004) ("Arbel").
ANALYSIS
Patent-Ineligible 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. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
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.
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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." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "determining business solutions,"
which the Examiner concluded is a fundamental economic practice, an idea
of itself, and also a method of organizing human activities and, therefore, an
abstract idea (Final Act. 4--8). The Examiner also determined that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the claims recite
"generic computer elements ( e.g., a computer readable medium) which do
not add a meaningful limitation to the abstract idea because they would be
routine in any computer implementation" (id. at 11-12).
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Appellant first charges that the Examiner erred in rejecting
independent claims 1 and 40 under § 101 because "the claimed invention
effect[ s] an improvement in the technology and technical field of
operations and management processes of telecommunication networks"
(App. Br. 6). Appellant asserts that the claimed invention is "directed
towards determining operations and management processes, ( or management
networks), for managing specific network architecture and technology[,] and
[ quantifying the] pertinent costs of the operations and management
processes for managing the specific network architecture and technology"
(id. at 7). And Appellant argues that the claimed invention effects a
technological improvement "for the reasons that prior art references are only
directed to planning network architectures and technologies" whereas the
claimed invention is "directed to determining alternative management
processes, (or management networks), for completely managing the network
architectures and technologies for the telecommunications network" (id.
at 8).
Appellant appears to be arguing that the claims are patent-eligible
because the claimed invention is distinguishable from the prior art. Yet,
neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. 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, but rather, 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 (citation omitted).
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"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). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
( 1981) ("The 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.").
Focusing specifically on independent claim 1, Appellant asserts that
claim 1 is directed to a process for determining alternative management
processes for managing selected network architectures for a
telecommunications network (App. Br. 9), and that the claim includes
additional elements, i.e., steps ( d), ( e ), and (g), which "add significantly
more to prior references, which are directed only to planning network
architectures and technologies" (id. at 10). But again, Appellant appears to
be arguing that the claim is patent-eligible because it is patentable over the
prior art, which, as described above, is not persuasive of Examiner error.
Appellant further asserts that the technical improvement of the
claimed invention is "directed towards: (1) determining alternative
management processes for managing selected network architectures and
technologies; and (2) reducing costs for the alternative management
processes for managing the selected network architectures and technologies"
(id. at 10-11 ). But, we fail to see how or why, and Appellant does not
explain how or why, this constitutes a technological improvement as
opposed to an improvement in a business practice.
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Appellant offers substantially similar arguments with respect to
independent claim 40 ( id. at 11-12). But, as with claim 1, Appellant does
not explain how or why "determining alternative management processes, ( or
the management networks), for completing managing various network
architectures and technologies for a telecommunications network" and
reducing costs for the alternative management processes, ( or management
networks), for managing various network architectures and technologies for
the telecommunications network" constitutes a technical improvement.
Instead, Appellant merely asserts, "the claimed invention discloses a
computer program product and a method, which are both novel and
inventive" (id. at 12), which is not persuasive of Examiner error.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claims 1 and 40 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner's rejection. We also sustain the Examiner's
rejection under§ 101 of dependent claims 2-8, 10-19, 21-26, 41--45, and
4 7-51, which are not argued separately except based on their dependence
from independent claims 1 and 40 (id. at 13).
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
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clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
In rejecting independent claims 1 and 40 under§ 112, first paragraph,
the Examiner takes the position that the Specification lacks sufficient written
description support for limitations ( d) and ( e ), as recited in independent
claim 1, and similarly recited in independent claim 40 (Final Act. 24--25).
The remaining claims are rejected based on their dependence from claims 1
and 40 (id. at 26).
We agree with Appellant that the original Specification includes the
requisite written description support at least in paragraphs 13 6-13 8 and
Table 1430 of Figure 14 (App. Br. 15- 22) (identifying the portions of the
Specification and drawings where the requisite written description is found).
Therefore, we do not sustain the Examiner's rejection of independent
claims 1 and 40 under 35 U.S.C. § 112, first paragraph. For the same
reasons, we also do not sustain the Examiner's rejection of dependent
claims 2-8, 10-19, 21-26, 41--45, and 47-51.
Indefiniteness
Appellant does not provide any response to the Examiner's rejection
of claims 1-8, 10-19, 21-26, 40--45, and 47-51 under 35 U.S.C. § 112,
second paragraph. Therefore, the Examiner's rejection is summarily
sustained.
Obviousness
Independent Claims 1 and 40 and Dependent Claims 2---8, 10, 15-19, 21-26,
41-45, and 47-51
Appellant maintains that none of the cited references, individually or
in combination, discloses or suggests limitations ( d) and ( e ), as recited in
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independent claim 1, and similarly recited in independent claim 40 (App.
Br. 23-33). Yet, Appellant's arguments amount to no more than a recitation
of the claim language, summaries of the cited references, and general
allegations of patentability (id. at 25-32), from which Appellant summarily
concludes, "a person of ordinary skill in the art would not find reason ( or
motive) to modify the prior art references for claims elements ( d) and ( e) of
the claimed invention. Hence, the claimed invention of the present
application cannot be obvious" (id. at 33).
Appellant may well disagree with how the Examiner interpreted and
applied the references, but Appellant offers no substantive arguments to
rebut the specific underlying factual findings made by the Examiner in
support of the ultimate legal conclusion of obviousness. And we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.").
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections." ( citing
Ex Parte Frye, 94 USPQ2d 1072 (BP AI 2010) (precedential) ("The panel
then reviews the obviousness rejection for error based upon the issues
identified by appellant, and in light of the arguments and evidence produced
thereon."))). Therefore, we sustain the Examiner's rejection of independent
claims 1 and 40 under 35 U.S.C. § 103(a). For the same reasons, we also
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sustain the Examiner's rejection of dependent claims 2-8, 10, 15-19, 21-26,
41--45, and 47-51, which were not argued separately except based on their
dependence from claims 1 and 40 (App. Br. 36-37). 3
Dependent Claims 11-14
Claims 11-14 depend, directly or indirectly, from independent
claim 1. Appellant does not present any substantive arguments in support of
the patentability of claims 11-14 except to assert that Arbel does not cure
the deficiencies ofNgi, Bowman-Amuah, and EURESCOM, and that
claims 11-14 are non-obvious for the same reasons that independent claim 1
is non-obvious (App. Br. 37-38).
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore,
we sustain the Examiner's rejection of claims 11-14 for the same reasons.
DECISION
The Examiner's rejection of claims 1-8, 10-19, 21-26, 40--45, and
47-51 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1-8, 10-19, 21-26, 40--45, and
47-51 under 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner's rejection of claims 1-8, 10-19, 21-26, 40--45, and
47-51 under 35 U.S.C. § 112, second paragraph, is affirmed.
3 The Appeal Brief includes a section entitled "Objective evidence present
in the application indicating nonobviousness" in which Appellant variously
describes the claimed invention, including "the key objective" of the claimed
invention, the motivation of the invention, and its "focal point." But, as the
Examiner also observes (Ans. 19-20), there is nothing in that section that
provides objective evidence of non-obviousness, e.g., unexpected results,
commercial success, long-felt but unsolved needs, failure of others.
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The Examiner's rejections of claims 1-8, 10-19, 21-26, 40-45, and
47-51 under 35 U.S.C. § 103(a) are affirmed.
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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