Ex Parte Peltz et al

Patent Trial and Appeal Board

Jul 10, 2018

12251259 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/251,259 10/14/2008 Christopher Peltz
56436 7590 07/12/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82245644 5247
EXAMINER
ALLEN, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07/12/2018 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):
hpe.ip.mail@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER PELTZ, DAVID TRASTOUR, and
CLAUDIO BARTOLINI
Appeal2017-003659 1
Application 12/251,259
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-20. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to prioritizing problems in information
technology services. Spec. ,r 8.
1 The Appellants identify the Hewlett-Packard Development Company, LP
as the real party in interest. Br. 1.
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Application 12/251,259
Claim 1 is illustrative:
1. A method comprising:
determining a plurality of N problems m Information
Technology (IT) services;
determining an incident cost In for each of the N problems;
determining a workaround cost W n for each of the N
problems;
assigning expected resolution times to a plurality of
priorities wherein each priority p of the plurality of priorities is
assigned a different expected resolution time dp for resolving a
problem;
determining a number V n,p of occurrences of each of the N
problems for each priority p;
determining an expected resolution cost, Cn,p for fixing
each of the N problems for each priority p;
based at least in part on the determined incident costs In,
the determined workaround costs W n, the determined numbers
V n,p of occurrences, and the determined expected resolution
costs, Cn,p, assigning, by a processor-based machine including a
processor, a priority p from the plurality of priorities to each of
the N problems such that a cost for fixing all N problems is lower
than any other assignment of priorities from the plurality of
priorities to each of the N problems; and
performing, by an IT support organization, resolution of
the N problems according to a schedule based on at least the
assigned priority p.
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to abstract ideas.
We AFFIRM.
ANALYSIS
Principles of Law
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
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Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See id. at 2356 ("On their
face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk."); Bilski v.
Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners'
application explain the basic concept of hedging, or protecting against
risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
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[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they
were decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-
54.[] That is the classic common law methodology for creating
law when a single governing definitional context is not
available. See generally Karl N. Llewellyn, The Common Law
Tradition: Deciding Appeals (1960). This more flexible
approach is also the approach employed by the Supreme Court.
See Alice, 134 S. Ct. at 2355-57. We shall follow that
approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
The patent-ineligible end of the spectrum includes fundamental
economic practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611);
mathematical formulas (Flook, 437 U.S. at 594--95); and basic tools of
scientific and technological work (Benson, 409 U.S. at 69). On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber (Diamond, 450 U.S. at 184 n.7), "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour (Gottschalk, 409 U.S. at 69).
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
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Claims 1-15
Independent method claim 1 is directed to gathering data on reported
problems, data on costs to solve the problems, and data on costs incurred by
not solving the problems, assigning priorities to fixing the problems so as to
minimize the total cost related to the problems, and resolving the problems
according to the assigned priorities.
There are five recited determination steps. As to "determining a
plurality ofN problems," the Specification describes that, typically, "a
service disruption is usually reported to an IT help desk that will raise an
incident ticket," and that the incident is logged for further investigation.
Spec. ,r 1. In addition, "[p ]roblems may be documented in a problem data
base." Id. ,r 12. Therefore, we construe that the determining of problems is
merely a data gathering step. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en bane), aff'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010)
( characterizing data gathering steps as insignificant extra-solution activity).
The nature of the problems is not limited except, broadly, to
"Information Technology (IT) services" by the claim language. The
Specification describes that "IT (Information Technology) services are
provided by a collection of hardware components, software components and
people. When one of these components experience a problem ( e.g. hardware
fault, configuration error, software conflict etc.), one or several IT services
may be affected." Spec. ,r 1. Based on that, the problems are broadly
construed to encompass problems centered on people, which may involve
only mental thought to address.
In one embodiment, "incident cost may correspond to the penalties
defined" in a service level agreement. Id. ,r 14. Under the broadest
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reasonable construction, the claimed "determining" of incident cost, thus, is
merely a data gathering step.
In one embodiment, workaround cost "is calculated using the average
cost of a workaround." Id. ,r 15. Under the broadest reasonable
construction, the claimed "determining" of workaround cost, thus, may be a
data lookup step, which is a data gathering step.
In one embodiment, the claimed "assigning expected resolution
times" is described as referring to a table of resolution times expected for
each priority level selected. Id. ,r 10, e.g., Table 1. Under the broadest
reasonable construction, the assignment of expected resolution times may be
a data lookup step, which is a data gathering step.
The claimed "determining a number Vn,p of occurrences" a problem is
expected to happen varies based on the time to resolve a problem, which in
tum depends upon the priority chosen for resolving the problem, which may
"be determined from historical data for the incident or based on knowledge
from a support staff." Id. ,r 13. This step may, thus, be a data gathering step
based on looking up stored data, or a mental thought step utilizing the
personal knowledge of a staff member.
The Specification describes that the "expected resolution cost Cn,p is
an estimated cost of fixing a problem n within an expected resolution time
dp." Id. ,r 17. The determination of an expected resolution cost, thus, may
be performed by mental thought.
The claimed "assigning" of priorities based on the data inputs is part
of an optimization step to minimize total cost using the cost, incidence, and
time values "determined" in the first six limitations. Id. ,r 31 ("A minimum
total cost Ct may be obtained by assigning different combinations of priories
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to each of the six problems until a minimum cost Ct is obtained.") The
process of optimizing for minimum total cost based on data inputs can be
performed mentally.
The final step, performing resolution of the problems, is indicated by
the Appellants as being described in the Specification at "p. 4, ln. 15 - p. 5,
ln. 2; p. 5, ln. 19 - p. 6, ln. 12; p. 9, ln. 24 -p. 11, ln. 15." Br. 3. The citation
at pages 4 to 5 essentially describes that problems may be documented.
Spec. ,r 12. The citation at pages 5 to 6 essentially describes how the cost of
implementing a workaround may be determined. Id. ,r 15. The citation at
pages 9 to 11 essentially describes optimizing for lowest cost and that
additional constraints may need to be considered, and provides variations on
how the resolution of problems may be scheduled, such as using priority
alone, or priority along with cost within each priority. Id. ,r,r 31-36.
In these cited paragraphs, though, there is no description of the
method for resolving problems. However, the Specification describes that:
Correcting the underlying problem typically requires human
and technical resources. For example, an estimated expected
resolution cost Cn,p may include the cost of 2 days of work from
a software engineer to write software changes, the cost of 2
days of work from a test engineer for quality assurance, and the
cost of one day of work from a support engineer to release the
change into production.
Id. ,r 16. We, thus, construe the resolution of problems to essentially be a
human task, which under the broadest reasonable construction may involve
only mental thought with pen and paper.
The method, thus, involves only data gathering steps, which are
insignificant extra-solution activities, and steps that under the broadest
reasonable construction can be performed entirely by a human using mental
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thought. The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under§ 101."). Additionally, mental processes, e.g.,
assigning priorities based on a minimum cost optimization, as recited in
claim 1, remain unpatentable even when automated to reduce the burden on
the user of what once could have been done with pen and paper. Id. at 1375
("That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson, [ 409 U.S. 63 (1972)].").
For this reason, the method of claim 1 is directed to an abstract idea.
Nothing in the claim falls outside the scope of gathering data on reported
problems, data on costs to solve the problems, and data on costs incurred by
not solving the problems, assigning priorities to fixing the problems so as to
minimize the total cost related to the problems, and resolving the problems
according to the assigned priorities.
Turning to the second step of the Alice/Mayo analysis, we look for an
inventive concept or "something more." Determining problems, costs,
times, and number of incidents to expect are simply data gathering and
mental steps, as is the optimization to assign priorities. Therefore, we find
nothing in the claim steps, or in the claim as a whole, that represents an
"inventive concept" or adds "something more" to transform the abstract
ideas to which the claim is directed into eligible subject matter.
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We find no meaningful distinction between independent method claim
1 and independent apparatus claim 8, because the claims both are directed to
the same underlying invention. As the Federal Circuit has made clear "the
basic character of a process claim drawn to an abstract idea is not changed
by claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium." See
CyberSource, 654 F.3d at 1375-76 (citing In re Abele, 684 F.2d 902 (CCPA
1982)).
Independent method claim 10 differs from claim 1, primarily by not
reciting a requirement to achieve a lowest cost, but, instead, reciting that
scheduling, broadly based on the same inputs as claim 1, is performed.
Scheduling is a task capable of being performed mentally by a human using
pen and paper. Claim 10, therefore, is also directed to a similar, though
broader, abstract idea. Similar to claim 1, we discern nothing in claim 10
that represents an inventive concept or "something more" to transform the
abstract idea into eligible subject matter, because the scheduling, like the
other steps in the method, can be performed entirely through mental thought.
We are not persuaded by the Appellants' arguments that claim 1 is not
either a fundamental economic activity, or a method of organizing human
activity, because claim 1 is directed to an abstract idea in that it can be
performed mentally by a human. See Br. 6-10.
We are not persuaded that the claim is not abstract on the basis of
being "inventive," an argument that the Appellants base on the fact that the
Board determined the prior art of record did not render the claim obvious.
Br. 10-11.
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A finding of novelty or non-obviousness does not automatically lead
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. "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, 450 U.S. at 188-89
("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.").
Therefore, we sustain the Examiner's rejection of claim 1 as directed
to an abstract idea. We also sustain the rejection of independent claims 8
and 10, which are argued only by reference to claim 1, as well as dependent
claims 2-7, 9, and 11-15. See Br. 12. However, because our rationale
differs from that of the Examiner, we denominate our affirmance as a new
ground of rejection.
Claims 16. 19. and 20
Each of dependent claims 16, 19, and 20 recite "an IT service that
includes a hardware component."
The Appellants argue this language provides "an inventive concept 'in
the physical realm of things' that provides a 'new and useful application' of
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the claimed subject matter to the physical realm, namely resolution of a
problem in an IT service that includes a hardware component." Br. 13
(citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir.
2014)).
We are not persuaded by the Appellants' argument, because the
claimed methods and apparatus broadly encompass resolving problems
using only mental steps, even if the overall service includes a hardware
component. In addition, even if the action were performed on a computer
itself, the claims are broad enough to encompass well-understood, routine,
and conventional activities, such as restarting a computer. See, e.g.,
ENCYCLOPAEDIA BRITANNICA, Modern types of operating systems'
https://www.britannica.com/technology/computer (last visited June 29,
2018) ("PC users seem to have become quite tolerant of frequent operating
system failures that require restarts.").
Therefore, we sustain the rejection of claims 16, 19, and 20 as
directed to abstract ideas.
Claims 17 and 18
Each of dependent claims 1 7 and 18 recite language substantially
equivalent to "restarting of the code on the computer." Claim 18 depends
from claim 1 7.
The Appellants argue that, by the restarting of computer code, "it is
clear that claim 1 7 relates to improving the function of a computer. As
stated by Alice, a method claim that improves the functioning of a computer
is considered to transform the claim process into a patent-eligible
application. Alice, [134 S. Ct. 2355]." Br. 13.
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We are unpersuaded by the argument, because simply restarting code
that is operating on a computer does not alter the computer, in that the same
computer and code are present after rebooting as before. In addition, the
ordinary artisan would have recognized that the restarting of code on a
computer as a well-understood, routine, and conventional activity in the
realm of computer operations, and, thus, does not transform the abstract idea
into eligible subject matter. See, e.g., PC MAGAZINE COMPUTER
ENCYCLOPEDIA, https://www.pcmag.com/ encyclopedia/term/ 5 02 8 8/reboot
(last visited June 29, 2018) ("reboot - To reload the operating system and
start over. A reboot often solves many software problems in computers,
smartphones, tablets, cable boxes and other electronics devices, because it
resets the system"); see also B. Joshi, D. Pradhan, and J. Stiffler, Fault-
Tolerant Computing, WILEY ENCYCLOPEDIA OF COMPUTER SCIENCE AND
ENGINEERING (B. W. Wah ed., 2009) ("The straightforward recovery
strategy is to terminate execution of the program and to re-execute the
complete program from the beginning on all the processors, which is known
as the global restart."); M. Schulz, Checkpointing, ENCYCLOPEDIA OF
PARALLEL COMPUTING (Padua D. ed., 2011):
Checkpointing is most typically used to provide fault tolerance
to applications. In this case, the state of the entire application is
periodically saved to some kind of stable storage, e.g., disk, and
can be retrieved in case the original application crashes due to a
failure in the underlying system. The application is then
restarted ( or recovered) from the checkpoint that was created
last and continued from that point on, thereby minimizing the
time lost due to the failure.
Therefore, we sustain the rejection of claims 17 and 18 as directed to
abstract ideas.
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DECISION
We AFFIRM the rejection under 35 U.S.C. § 101 of claims 1-20.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b) (2008). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
37 C.F.R. § 4I.50(b)
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