Ex Parte Rolia et al

Patent Trial and Appeal Board

Feb 19, 2019

12815207 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/815,207 06/14/2010
146568 7590
ENTIT SOFTWARE LLC
500 Westover Drive
#12603
Sanford, NC 27330
02/21/2019
FIRST NAMED INVENTOR
Jerome Rolia
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.
82262423 1911
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME ROLIA, SHIV A PRAKASH,
and MUSTAZIRUL ISLAM
Appeal2017-011005
Application 12/815 ,207 1
Technology Center 3600
Before ELENI MANTIS-MERCADER, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3-5, 7-13, 15-20, and 22. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to creating a capacity planning scenario.
Abstract. Claim 1 is illustrative of the invention and is reproduced below:
1. A method for creating a capacity planning scenario
using a computing system, comprising:
1 According to Appellants, Hewlett Packard Enterprise Development LP is
the real party in interest. App. Br. 1.
2 Claims 2, 6, 14, 21, 23, and 24 are canceled. Claims Appendix i.
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maintaining, with a computer processor of the computing
system, a topology model of information technology components
as relating to computing resources in a configuration
management database, wherein the topology model includes
information about the computing resources;
maintaining, with the computer processor, a facilities
model comprising information about physical facilities in which
the computing resources are used;
maintaining, with the computer processor, a workload
model of workload constraints for workloads on the computing
resources, wherein the workload constraints comprise limits on
at least one of how, when, and where the workload is to be used
with regards to the computing resources;
maintaining, with the computer processor, a service model
of business services for workloads on the computing resources,
wherein the service model comprises first relationships between
workloads and demand traces;
assigning, with the computer processor, first constraint
tags to the computing resources within the topology model,
workload model, and service model, wherein the first constraint
tags comprise information about topology relationships,
workload constraints, and service model services;
assigning, with the computer processor, second constraint
tags to the physical facilities within the facilities model;
assigning, with the computer processor, third constraint
tags to measurement data for the computing resources; and
generating, with the computer processor, a capacity
planning scenario for a computing environment comprising the
business services, workloads, and computing resources based on
the first, second, and third constraint tags.
REJECTIONS AT ISSUE
Claims 1, 3-5, 7-13, 15-20, and 22 stand rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 2-19.
Claims 1, 4, 5, 7-13, 15-17, 19, 20, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination ofRolia (US
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2008/0271039 Al; published Oct. 30, 2008), Gupta et al. (US 2009/0089072
Al; published Apr. 2, 2009), and Oeda (US 2009/0055507 Al; published
Feb. 26, 2009). Final Act. 19--59.
Claims 3 and 18 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Rolia, Gupta, Oeda, and Gibbs ( "IBM
eServer pSeries Capacity Planning: ISV Tools," 2004, IBM Redbooks
Paper). Final Act. 59--61.
Claims 4 and 13 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Rolia, Gupta, Oeda, and Gibbs. Final
Act. 62---65.
ANALYSIS
I. 35 USC§ 101 Rejections
A. Claims 1, 3-5, 9-13, 15-20, and 22
1. The Examiners Conclusions and Appellants 'Arguments
The Examiner concludes the present claims are directed to an abstract
idea of a mental process. Final Act. 7. And the Examiner concludes the
present claims can be performed with pen and paper. Id. The Examiner
determines the present claims do not amount to significantly more than an
abstract idea because the Examiner finds the abstract idea is implemented on
a computer using generic computer functions that are well-understood,
routine, and conventional activities previously known to the industry. Id. at
6.
Appellants argue, similar to McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1308-14 (Fed. Cir. 2016) and Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the present claims are
directed to an improvement in planning and deployment of information
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technology infrastructure that includes computing resources. App. Br. 7-8;
Reply Br. 2---6. Appellants argue the Specification illustrates the
improvement by disclosing that capacity modeling and planning can ensure
appropriate system resources are available to handle workloads of business
services. App. Br. 9; Reply Br. 6-8.
Appellants argue that, similar to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) and BASCOM Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present
claims are significantly more than any abstract idea because the present
claim are directed to inventive subject matter. App. Br. 10-11; Reply Br. 8-
10. We disagree with Appellants.
2. Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
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in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
3. Discussion
i. Step 2A, Prong 1 (Alice Step 1)
As an initial matter, we discern no error in the Examiner's conclusion
that the present claims are directed to an abstract idea of a mental process
that can be performed with pen and paper. Final Act. 7. We consider claim
1 (with emphases), reproduced below.
1. A method for creating a capacity planning scenario
using a computing system, comprising:
maintaining, with a computer processor of the computing
system, a topology model of information technology components
as relating to computing resources in a configuration
management database, wherein the topology model includes
information about the computing resources;
maintaining, with the computer processor, a facilities
model comprising information about physical facilities in which
the computing resources are used;
maintaining, with the computer processor, a workload
model of workload constraints for workloads on the computing
resources, wherein the workload constraints comprise limits on
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at least one of how, when, and where the workload is to be used
with regards to the computing resources;
maintaining, with the computer processor, a service model
of business services for workloads on the computing resources,
wherein the service model comprises first relationships between
workloads and demand traces;
assigning, with the computer processor, first constraint
tags to the computing resources within the topology model,
workload model, and service model, wherein the first constraint
tags comprise information about topology relationships,
workload constraints, and service model services;
assigning, with the computer processor, second constraint
tags to the physical facilities within the facilities model;
assigning, with the computer processor, third constraint
tags to measurement data for the computing resources; and
generating, with the computer processor, a capacity
planning scenario for a computing environment comprising the
business services, workloads, and computing resources based on
the first, second, and third constraint tags.
We conclude the emphasized portions of claim 1 are directed to the
abstract idea of a mental process that can be performed with pen and paper.
Independent claims 5 and 16 recite similar features.
We, thus, disagree with Appellants' argument that similar to McRO
and Enfzsh, the present claims are directed to an improvement in planning
and deployment of information technology infrastructure that includes
computing resources. App. Br. 7-8; Reply Br. 2---6. We also disagree with
Appellants' argument that the Specification illustrates the improvement by
disclosing that capacity modeling and planning can ensure appropriate
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system resources are available to handle workloads of business services.
App. Br. 9; Reply Br. 6-8.
Because the present claims recite a mental process, we proceed to
prong 2.
ii. Step 2A, Prong 2 (Alice Step 2)
From reproduced claim 1, shown above in the discussion pertaining to
Alice step 1, prong 1, claim 1 recites additional limitations pertaining to a
computer processor. The recitation of a computer processor in claim 1 is
recited at a high level of generality. This generic processor limitation is no
more than a generic computer component.
Accordingly, this additional element does not integrate the abstract
idea into a practical application because it does not impose any meaningful
limits on practicing the abstract idea. Because the present claims are
directed to an abstract idea, we proceed to Step 2B.
iii. Step 2B (Alice Step 2 Continued)
We discern no error in the Examiner's determination that the present
claims do not amount to significantly more than an abstract idea because the
Examiner finds the abstract idea is implemented on a computer using generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Final Act. 6. Moreover,
Appellants' Specification states "[ m ]odules may also be implemented in
software for execution by various types of processors" ( emphasis added)
indicating generic processors. Spec. 13:33-34.
We disagree with Appellants' argument that, similar to DDR and
BASCOM, the present claims are significantly more than any abstract idea
because the present claim are directed to inventive subject matter (App. Br.
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10-11; Reply Br. 8-10) for reasons stated supra in the discussion of Alice
Step 1.
Appellants do not argue separately claims 3-5, 9-13, 15-20, and 22
with particularity. App. Br. 6-12. Accordingly, we sustain the Examiner's
rejection of claims 1, 3-5, 9-13, 15-20, and 22 under 35 U.S.C. § 101.
iv. Claims 7-8
Claim 7 recites "wherein creating the capacity planning scenario
further comprises solving for potential changes in future usage of the
computing resource" ( emphasis added).
The Examiner concludes that the present claims are directed to an
abstract idea of a mental process that can be performed with pen and paper.
Final Act. 7. And the Examiner determines that the present claims do not
amount to significantly more than an abstract idea because the Examiner
finds the abstract idea is implemented on a computer using generic computer
functions that are well-understood, routine, and conventional activities
previously known to the industry. Id. at 6.
Appellants argue this improves computer functionality because it is
directed to solving for potential changes in future usage of computing
resources. App. Br. 12; Reply Br. 10-11.
We conclude the emphasized portions of claim 1 are directed to the
abstract idea of a mental process that can be performed with pen and paper.
Claim 7 does not integrate the abstract idea into a practical application
because it does not impose any meaningful limits on practicing the abstract
idea. Because the present claims are directed to an abstract idea, we proceed
to Alice Step 2.
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We discern no error in the Examiner's determination that the present
claims do not amount to significantly more than an abstract idea because the
Examiner finds the abstract idea is implemented on a computer using generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Final Act. 6; Spec. 13 :33-34.
Appellants do not argue separately claim 8 with particularity. App.
Br. 12; Reply Br. 11. Accordingly, we sustain the Examiner's rejection of
claims 7-8 under 35 U.S.C. § 101.
II. 35 US.C. § 103 Rejections
A. Claims 1, 4, and 22
The Examiner finds Rolia teaches capacity or assigning a workload,
which the Examiner maps to the limitation "assigning, with the computer
processor, third constraint [] to measurement data for the computing
resources" recited in claim 1. Ans. 7 ( citing Rolia ,r 28). The Examiner
finds Gupta teaches tags. Ans. 7-8 (citing Gupta ,r,r 18-19).
Appellants argue Rolia's capacity teach the limitation "assigning, with
the computer processor, third constraint [] to measurement data for the
computing resources" because it lacks a teaching of "assigning." Reply Br.
11-12. 3 Appellants argue Rolia and Gupta cannot teach the limitation "third
constraint tags" because Gupta merely teaches policy tags. App. Br. 16-17;
Reply Br. 14--16. We disagree with Appellants.
The cited portions of Rolia teach capacity (i.e., a capacity is a
constraint that is assigned to measurement data), which teaches the
3 Appellants argument is timely because the Examiner changed their theory
from saying Rolia's "measures" teaches "constraint" to Rolia's "capacity"
teaches "constraint." Compare Final Act. 22 with Ans. 7.
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limitation "assigning, with the computer processor, third constraint [] to
measurement data for the computing resources" recited in claim 1. Ans. 7
( citing Rolia ,r 28).
Regarding Appellant's argument pertaining to Gupta failing to teach
"third constraint tags" (App. Br. 16-17; Reply Br. 14--16), we disagree with
Appellants because one cannot show nonobviousness "by attacking
references individually" where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). In this case, the cited
portions of Gupta relied upon by the Examiner teach policy tags and Rolia
teaches the limitation "assigning, with the computer processor, third
constraint [] to measurement data for the computing resources" recited in
claim 1. Ans. 7-8 (citing Rolia ,r 28; Gupta ,r,r 18-19).
Appellant does not argue separately claims 4 and 22 with
particularity. App. Br. 12-17. Accordingly, we sustain the Examiner's
rejection of claims 1, 4, and 22 under 35 U.S.C. § 103.
B. Claims 5, 7-13, 15-17, 19, and 20
The Examiner finds the combination of Rolia, Gupta, and Oeda
teaches the limitations of claims 5, 7-13, 15-17, 19, and 20. Final Act. 19-
59.
Appellants argue claims 5, 7-13, 15-17, 19, and 20 are non-obvious
over Rolia, Gupta, and Oeda for the same reasons argued with respect to
claim 1 and, in particular, these references fail to teach "second constraint
tags" recited in independent claim 16 ( and similarly recited in independent
claim 5). We disagree with Appellants.
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At the outset, we sustain the Examiner's rejection for at least the
reasons we sustain the Examiner's rejection of claims 1, 4, and 22 under
35 U.S.C. § 103. That said, in claim 1, the issue focused on whether the
references teach "third constraint tags," whereas Appellants seem to be
arguing "second constraint tags" with respect to claims 5, 7-13, 15-17, 19,
and 20. To the extent that Appellants are arguing "second constraint tags,"
we note that Appellants do not proffer sufficient arguments with respect to
"second constraint tags."
Additionally, in order to rebut a prima facie case of unpatentability,
Appellants must distinctly and specifically point out the supposed Examiner
errors, and the specific distinctions believed to render the claims patentable
over the applied references. See 37 C.F.R. § 4I.37(c)(vii) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in 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.").
Appellants do not argue separately claims 5, 7-13, 15-17, 19, and 20
with particularity. App. Br. 17-18. Accordingly, we sustain the Examiner's
rejection of claims 5, 7-13, 15-17, 19, and 20 under 35 U.S.C. § 103.
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C. Claims 3 and 18
The Examiner finds Gibbs' s reducing the number of CPUs for
licensing reasons, which the Examiner maps to the limitation "assigning a
constraint tag to one of the computing resources to reflect a licensing
agreement associated with the computing resource" recited in claim 3. Final
Act. 59-60 ( citing Gibbs, 78).
Appellants argue Gibbs' s reducing the number of CPUs for licensing
reasons does not involve assigning such a constraint tag to a computing
resource to reflect a licensing agreement associated with the computing
resource. We disagree with Appellants.
The cited portions of Gibbs teach reducing the number of CPUs for
licensing reasons, which at least suggests the limitation "assigning a
constraint tag to one of the computing resources to reflect a licensing
agreement associated with the computing resource" recited in claim 3. Final
Act. 59-60 ( citing Gibbs, 78).
Appellant does not argue separately claim 18 with particularity. App.
Br. 18-20. Accordingly, we sustain the Examiner's rejection of claims 3
and 18 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-5, 7-13, 15-
20, and 22 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 3-5, 7-13, 15-
20, and 22 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).
AFFIRMED
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