Ex Parte Reddington et al

Patent Trial and Appeal Board

Nov 1, 2017

13182769 (P.T.A.B. Nov. 1, 2017)

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.
13/182,769 07/14/2011 Francis X. Reddington END920110091US1 7040
76933 7590
IBM (END-KLS)
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
AUSTIN, TX 78701
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/03/2017 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):
office@klspatents.com
kate@klspatents.com
hanna@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS X. REDDINGTON
and NEIL SAHOTA
Appeal 2015-0038371
Application 13/182,7692
Technology Center 3600
Before MICHAEL W. KIM, SHEILA F. McSHANE, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, 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—18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
October 13, 2014), Reply Brief (“Reply Br.,” filed February 2, 2015), the
Examiner’s Answer (“Ans.,” mailed December 2, 2014), and Final Office
Action (“Final Act.,” mailed May 9, 2014).
2 Appellants identify International Business Machines Corporation as the
real party in interest (Appeal Br. 1).
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CLAIMED INVENTION
Appellants’ claimed invention relates generally to “data processing,
or, more specifically, methods, apparatus, and products for Enterprise
Intelligence (‘EE) assembly analysis in an El framework” (Spec. 1,11. 9—11).
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
1. A method of Enterprise Intelligence (‘EE) assembly
analysis in an El framework, the method comprising:
[a] determining, by an El assembly analysis engine
comprising a module of automated computing machinery, the
present execution state of an one or more El assemblies;
[b] determining, by the El assembly analysis engine, the
ideal execution state for the one or more El assemblies, including
retrieving from an El assembly taxonomy repository, one or
more taxonomy breakdowns for processes of the one or more El
assemblies, each taxonomy breakdown including information
identifying an acceptable range of values for one or more input
parameters and one or more execution variables utilized by each
process of the one or more El assemblies; and
[c] identifying, by the El assembly analysis engine,
differences between the present execution state of the one or
more El assemblies and the ideal execution state for the one or
more El assemblies, including comparing actual values for the
one or more input parameters and the one or more execution
variables utilized by each process of the one or more El
assemblies to the acceptable range of values for the one or more
input parameters and the one or more execution variables utilized
by each process of the one or more El assemblies.
App. Br. 14 (Claims Appendix).
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REJECTIONS
Claims 1—18 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.3
Claims 1—18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Van Biljon (US 2012/0110055 Al, pub. May 3, 2012) and Abrari (US
2006/0129978 Al, pub. June 15, 2006).
ANALYSIS
Non-statutory subject matter
Independent claims 1, 7, and 13, and dependent claims 2—6, 8—12, and 14—
18
Appellants argue claims 1—18 as a group (see Reply Br. 12—16). We
select independent claim 1 as representative. Claims 2—18 stand or fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry [jcannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
3 The Examiner entered this rejection as a new ground (see Ans. 2—3).
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one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring
into “the focus of the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
“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 Texas,
LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see
also Enfish, 822 F.3d at 1335.
In rejecting independent claims 1—18 under 35 U.S.C. § 101, the
Examiner finds that the claims, considered as a whole, are directed to “a
method of organizing human activities or a formula” (Ans. 2). More
particularly, the Examiner finds the claims are “directed to determining an
ideal execution state and a present execution date, and then determining
differences between them via value comparison,” which do not amount to
significantly more than an abstract idea (id. ).
In response, Appellants argue that the claims “are directed to the
technical field of Enterprise Intelligence (‘EE) assembly analysis in an El
framework” (Reply Br. 13), and as such,
cannot include an abstract idea within the meaning of Alice
because the claims of the present application are not directed to
a long-prevalent and fundamental practice in comparison to the
abstract ideas of risk-hedging and intermediated settlement relied
upon by the Alice Court, which have been in widespread use for
many centuries through the world.
(Id. at 13-14).
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At the outset, we note that the Supreme Court in Alice did not rigidly
define or otherwise restrict the universe of abstract ideas to one or more of:
a building block of human ingenuity, a fundamental economic practice, and
an algorithm. See Alice, 134 S. Ct. at 2357 (“we need not labor to delimit
the precise counters of the ‘abstract ideas’ category”). And, here the
Examiner does not find that the claims are directed to a building block of
human ingenuity, a fundamental economic practice, or an algorithm.
Furthermore, “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016).
Under step one of the framework set forth in Alice, we agree with the
Examiner that the invention is broadly “a method of organizing human
activities or a formula” (Ans. 2), and more particularly, “directed to
determining an ideal execution state and a present execution date, and then
determining differences between them via value comparison” (id.). And
based on our review of independent claim 1, we find that independent claim
1 involves nothing more than accessing data, i.e., determining present
execution state and ideal execution state, determining/evaluating data, i.e.,
identifying differences between present execution state and ideal execution
state by comparing acceptable values to acceptable ranges; all steps that may
be performed manually. See CyberSource, 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.”). We also
determine that independent claim 1 is similar to claims that our reviewing
court has found patent ineligible in Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed.Cir. 2016) (collecting information and “analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category.”), Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1333 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510 (2016) (using
organizational and product group hierarchies to determine a price), and
Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm used for
adjusting an alarm limit).
Accordingly, we find that independent claim 1 involves nothing more
than accessing and determining/evaluating data to identify differences
between present execution state and ideal execution state, without any
particular inventive technology — these activities are squarely within the
realm of abstract ideas. See, e.g., Elec. Power Grp., LLC, 830 F.3d at 1353—
54 (when “[t]he focus of the asserted claims” . . . “is on collecting
information, analyzing it, and displaying certain results of the collection and
analysis,” the claims are directed to an abstract idea); see also Accenture
Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45
(Fed. Cir. 2013) (claims reciting “generalized software components arranged
to implement an abstract concept [of generating insurance-policy-related
tasks based on rules to be completed upon the occurrence of an event] on a
computer” not patent eligible).
Step two is “a search for an ‘inventive concept’—i.e., 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, 134 S. Ct. at 2355 (alteration in original) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
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And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “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.” Elec. Power Grp., 830 F.3d at 1355.
Here, Appellants argue that the claims amount to significantly more
than the abstract idea because
the claims improve upon existing enterprise intelligence
technologies. In particular, the recited limitations gather
information that describe the execution state of El assemblies,
identify an ideal execution state, and determine how closely each
El assembly is operating relative to its ideal execution state. In
such a way, corrective action may be identified (e.g., claim 3)
and ultimately taken to ensure that El assemblies are executed as
close as possible to their ideal execution states, thereby
improving the operations of the El assemblies and the El
framework as a whole.
(Appeal Br. 16; see also Reply Br. 8). However, Appellants’ argument does
not establish that the argued limitations add inventiveness, which may be
“significantly more,” as opposed to the application of conventional, well-
known analytical steps, which are not. See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps
comprises only ‘conventional steps, specified at a high level of generality,’
which is insufficient to supply an ‘inventive concept.’”) (Citing Alice, 134 S.
Ct. at 2357) (internal citations omitted). And, there is no indication in the
record that any specialized computer hardware is required or evidence that
the programming related to these “improvements” would entail anything
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atypical from conventional programming. Instead, the Specification
discloses utilizing generic computer components “includ[ing] at least one
computer processor (156) or ‘CPU’ as well as random access memory (168)
(‘RAM’) which is connected through a high speed memory bus (166) and
bus adapter (158) to processor (156) and to other components of the
computer (152)” (Spec. 3,1. 26 — Spec. 4,1. 1).
Furthermore, although we agree with Appellants’ that claim 1
generates, i.e., identifies, an El correction plan, neither the claims nor the
Specification provide any type of automatic correction, specific rules, or
details of implementations specific to El that improve any technological
process. Instead, the Specification merely discloses generally “presenting
(724) the El assembly correction plan (726) to an El administrator (238)” via
a user interface (Spec. 30,11. 13—18; see also Fig. 7). Thus, we find the
claimed invention merely invokes computers for their generic functions of
the collection and arrangement of data. When claims like the present claims
are “directed to an abstract idea” and “merely requir[e] generic computer
implementation,” they “do[] not move into section 101 eligibility territory.”
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014).
We also are not persuaded by Appellants’ argument that
the recited limitations effect a transformation of a particular
article to a different state. In particular, the recited limitations
are used to effect a transformation of an El assembly to a state
that is outside of acceptable operating states to a state that is as
close to possible of an ideal operating state.
(Reply Br. 16). As discussed above, the claimed invention merely provides
a correction plan to an administrator, i.e., human, through a user interface,
and as such, does not make any change without some human intervention
(see Spec. 30,11. 13—18; see also Fig. 7). Moreover, any alleged
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“transformation” due to “effecting] a transformation of an El assembly to a
state that is outside of acceptable operating states to a state that is as close to
possible of an ideal operating state” (see Reply Br. 16), is, at best, merely a
manipulation of data, which is not sufficient to meet the transformation
prong under 35 U.S.C. § 101. See Gottschalk v. Benson, 409 U.S. 63, 71—72
(1972) (a computer based algorithm that merely transforms data from one
form to another is not patent-eligible).
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2—18, which fall with
independent claim 1.
Obviousness
Independent claims 1, 7, and 13, and dependent claims 2—6, 8—12, and 14—
18
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Van Biljon and Abrari fails to disclose or suggest limitation
[b] of independent claim 1 which recites:
determining, by the El assembly analysis engine, the ideal
execution state for the one or more El assemblies, including
retrieving from an El assembly taxonomy repository, one or
more taxonomy breakdowns for processes of the one or more El
assemblies, each taxonomy breakdown including information
identifying an acceptable range of values for one or more input
parameters and one or more execution variables utilized by each
process of the one or more El assemblies.
(See Appeal Br. 7—10; see also Reply Br. 9).
In the Final Office Action, the Examiner finds Van Biljon discloses
“determining the ideal execution state” (Final Act. 5 (citing Van Biljon | 5)),
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but acknowledges that Van Biljon fails to disclose the remaining language of
limitation [b], i.e., “identifying an acceptable range of values for one or
more input parameters and one or more execution variables utilized by each
process” (see id.). To address this deficiency, the Examiner relies on Abrari
(see id. (citing Abrari || 10, 63); see also Ans. 5 (citing Abrari || 30, 62,
63)).
Van Biljon is directed “to a method of organizing permissions to
authorize a subject to perform an action on an object in a cloud computing
environment having a plurality of computing nodes” (Van Biljon | 6). More
particularly, Van Biljon discloses that a first set of permissions describes an
action performed on an object, and a second set of permissions describes an
action to be performed by one or more users (id.; see also id. at 153—58).
Van Biljon further discloses
a method of assigning a computing node to run an instance in a
cloud computing environment having a plurality of computing
nodes. The method comprises storing a representation of a
launch plan, comparing an actual state of the instances running
in the system to the ideal state as specified in the launch plan,
and applying changes to the actual state of the system to make it
consistent with the ideal state as specified in the launch plan.
(Id. 1 59). In this regard, Van Biljon discloses
Placement and workload management can be achieved
through “anti-entropy” where a persistent ideal, or desired, state
is continually compared with the actual state of the system, and
appropriate adjustments are made. In terms of such an approach,
a durable representation of an ideal state of part of the system is
stored (e.g. in a database), for example by storing a launch-plan
requested by a user. An ongoing “anti-entropy” process
compares the actual state of the system against the ideal state
specified in the launch plan, and applies any changes to the actual
system to make its state consistent with the ideal state, which
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may require placement of new workloads, termination of others,
adjustment of networks, or other actions.
(Id. 1132).
Abrari is directed to “a platform with an advantageous user interface
for the development, deployment, and maintenance of computer program
applications” (Abrari | 8; see also id. 110). Abrari’s system allows business
developers to utilize an Integrated Development Environment (IDE) which
enables “the development of declarative platform-independent rule
components called rulepacks” (id. 117). Abrari discloses that “[t]he IDE
includes a vocabulary 181, which represents the business entities, their
attributes, and their associations (relationships) in the form of a tree view”
(id. 130). Abrari also discloses that the IDE includes a rulepack and
rulesheet which is “a spreadsheet-like construct for intuitive development of
logically correct sets of rules” (id.). Abrari discloses that “[a] rulesheet can
also have preconditions in a preconditions pane 734. Preconditions are
conditions that apply to all rules. They are generally used to customize a
rulesheet to activate only in a particular situation or for a particular instance
of a business term” (id. 1 62). Abrari further discloses that a user can
provide a “value set for each condition term” in the definition of the
vocabulary which enables “the system can validate the rulesheet by applying
completeness and ambiguity checks” (id. 163).
We have reviewed the cited portions of Van Biljon and Abrari, and
agree with Appellants that the combination of Van Biljon and Abrari fails to
disclose or suggest the argued limitation (see Appeal Br. 7—10; see also
Reply Br. 9). Although we agree with the Examiner that Van Biljon
discloses broadly “determining [an] ideal execution state” (see Final Act. 5
(citing Van Biljon | 5)), we cannot agree with the Examiner that the asserted
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combination discloses or suggests “determining ... the ideal execution
state . . . including retrieving . . . information identifying an acceptable range
of values for one or more input parameters and one or more execution
variables utilized,” as limitation [b] further recites. That is, neither Van
Biljon nor Abrari, alone or in combination, disclose or suggest
“retrieving . . . information identifying an acceptable range of values for one
or more input parameters and one or more execution variables utilized”
(emphasis added), as independent claim 1 requires.
In response to Appellants’ arguments, the Examiner takes the position
that “[paragraphs 62 and 63 of Abrari disclose a value set with a range of
two or more values that can activate a rulesheet” (Ans. 5), and finds that
“[t]his is equivalent to an acceptable range of any kind of value, whether it
be input, execution, or otherwise” (id.). However, we agree with Appellants,
that limitation [b] requires “an acceptable range of values for: 1) one or
more input parameters utilized by each process of the one or more El
assemblies, and 2) one or more execution variables utilized by each process
of the one or more El assemblies” (Reply Br. 8—9).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of claims 2—6, which depend
therefrom.
Independent claims 7 and 13 and dependent claims 8—12 and 14—18
Independent claims 7 and 13 include a limitation substantially similar
to limitation [b] of independent claim 1, as discussed above. Therefore, we
do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
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independent claims 7 and 13, and claims 8—12 and 14—18 that depend
therefrom, for the same reasons set forth above with respect to independent
claim 1.
DECISION
The Examiner’s rejection of claims 1—18 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—18 under 35 U.S.C. § 103(a) is
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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