Ex Parte Salle et alDownload PDFPatent Trial and Appeal BoardFeb 8, 201612261760 (P.T.A.B. Feb. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/261,760 10/30/2008 Mathias Salle 56436 7590 02/10/2016 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. 82242923 4941 EXAMINER ALHIJA, SAIF A ART UNIT PAPER NUMBER 2128 NOTIFICATION DATE DELIVERY MODE 02/10/2016 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 mkraft@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 MATHIAS SALLE and ERIK EIDT Appeal 2013-002611 Application 12/261, 7 60 Technology Center 2100 Before STEVEN D.A. McCARTHY, ERIC B. CHEN, and ANDREW J. DILLON, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-21, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appeal2013-002611 Application 12/261, 7 60 STATEMENT OF THE CASE Appellants' invention relates to managing best practices in modeling information technology (IT) services. (Abstract.) Claim 1 is exemplary, with disputed limitations in italics: 1. A method comprising: receiving a service model for validation from a repository of service models; receiving a plurality of best practices (PBPs) referring to the service model; receiving a best practice precedence (BPP) to disambiguate conflicts between the PBPs; configuring an algorithm, the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP; and validating that the service model is in compliance with the SBP using a validation engine. Claims 1-7 stand rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1-3, 6-10, 13-17, 20, and 21 stand rejected under 35 U.S.C. § 102(b) as anticipated by Brown (Aaron B. Brown & Alexander Keller, A Best Practice Approach for Automating IT Management Processes, NETWORK OPERATIONS AND MANAGEMENT SYMPOSIUM 24--35 (2006)). Claims 4, 5, 11, 12, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Brown and Wieringa (R. J. Wieringa & J.- J.Ch. Meyer, Applications of Deontic Logic in Computer Science: A Concise Overview, DEONTIC LOGIC IN COMPUTER SCIENCE: NORMATIVE SYSTEM SPECIFICATION 1-28 (John Wiley and Sons, 1993)). 2 Appeal2013-002611 Application 12/261, 7 60 ANALYSIS § 101 Re} ection The Examiner articulated that "[ c ]laim 1 recites method steps without explicit recitation of hardware to implement said steps" and "[t]herefore the claims are rendered non-statutory." (Ans. 3; see also id. at 11.) To the extent the Examiner is applying the "machine or transformation" test, as articulated by the Supreme Court in Bilski v. Kappas, 130 S.Ct. 3218, 3227 (2010) ("[T]he machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101 "), we do not agree. The "machine or transformation" test applied by the Examiner was developed before the Supreme Court issued its decisions in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012) and Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347 (2014). We apply the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice for determining whether the claims are directed to patent-eligible subject matter. Alice, 134 S. Ct. at 2355. The first step in the analysis is to "determine whether the claims at issue are directed to one of [the judicially- recognized] patent-ineligible concepts." Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 132 S.Ct. at 1298, 1297). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to 3 Appeal2013-002611 Application 12/261, 7 60 monopolize the [abstract idea]."' Id. at 2357 (quoting Mayo, 132 S.Ct. at 1297). Step one: Are the claims at issue directed to a patent-ineligible concept? Independent claim 1 is a method claim, which recites: (i) "receiving a service model ... "; (ii) "receiving a plurality of best practices (PBPs) ... "; (iii) "receiving a best practice precedence (BPP) to disambiguate conflicts between the PBPs; and (iv) "configuring an algorithm, the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP." These method steps involve the abstract concept of data collection (i.e., the claimed "service model", "best practices", and "best practice precedence") and data selection from such data collection (i.e., the claimed "to select a selected best practice (SBP) from the PBPs based on the BPP"). Accordingly, claim 1 includes an abstraction that is arguably within the realm of a judicially-recognized patent-ineligible concept. Step two: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept? Thus, to the extent the claim could be considered to be directed to an abstract idea, the question to be settled next, according to Alice, is whether claim 1 recites an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than an abstract idea. In the "Background of the Invention" section, Appellants' Specification discloses the following problem: Thus, best practices are often developed internally within an enterprise as well as externally by several enterprises working collaboratively in workgroups. However, the editing of a 4 Appeal2013-002611 Application 12/261, 7 60 service model to incorporate one or more best practices is often performed by different authors that have different skills and different concerns depending on their perspective. Thus, editing of a service model by multiple authors may run into challenges such as software version control and management, including branch tree version control (e.g., fork reconciliation and branch tracking), version merge and update. (i-f 4.) Similarly, Appellants' Specification discloses "that it would be desirable to provide an architecture to manage best practices that would enable a user to download a service model from a web site, download a best practice for that service model from another web site, add a local best practice, and combine all of them without having to edit any of them." (i-f 16.) Appellants' Specification further provides a solution in disclosing that "[t]he architecture 100 enables the user to select the service model 112 separately and independently of selecting [plurality of best practices] 130 associated with the service model 112" and "[t]he [best practice precedence] 140 defines best practice precedence relationships between the [plurality of best practices] 130, thereby resolving potential conflicts or ambiguities there between." (i-f 20.) Thus, the recitation of "configuring an algorithm, the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP" and "validating that the service model is in compliance with the SBP using a validation engine" in claim 1 provides a solution to the stated problem of downloading a best practice for a service model, adding a local best practice, and combining the best practices without additional editing. See DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014) ("[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks."). These limitations are sufficient to 5 Appeal2013-002611 Application 12/261, 7 60 prevent claim 1 from monopolizing the abstract idea of data collection and selection from data collection. See Alice, 134 S.Ct. at 2357 (quoting Mayo, 132 S.Ct. at 1297). That is, claim 1 as a whole amounts to significantly more than the abstract idea of data collection and selection from such data collection. Thus, we do not agree with the Examiner that claim 1 is directed towards non-statutory subject matter. Accordingly, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 101. Claims 2-7 depend from independent claim 1, so we do not sustain the rejection of these claims under 35 U.S.C. § 101 forthe same reasons discussed with respect to independent claim 1. § 102 Rejection-Brown We are persuaded by Appellants' arguments (App. Br. 14) that Brown does not describe the limitation "the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP ," as recited in independent claim 1. The Examiner found that the CHAMPS system of Brown corresponds to the limitation "configuring an algorithm, the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP." (Ans. 4, 12.) In particular, the Examiner found that the "CHAMPS system ... utilizes mathematical scheduling and formulation for the optimization that is carried out according to the best practices" and "the scheduler part of the system ... selects and assigns tasks based on the workflows provided which have been previously determined to be following the recited precedence constraints." (Ans. 12.) We do not agree. 6 Appeal2013-002611 Application 12/261, 7 60 Brown relates to best-practice-based automation into information technology (IT) service delivery and management. (Abstract.) Brown explains that a change management system includes "Workflow Generator [which] breaks down an incoming RFC [Request for Change] into its elementary steps and determines the order in which they have to be carried out." (P. 28, §IV, para. 6.) Similarly, Brown explains that "[o]ur automated change management system, CHAMPS (CHAnge Management with Planning and Scheduling), automates change impact assessment, approval, and scheduling" such that optimization techniques are based on mathematical scheduling theory. (P. 31, § VI, para. 1.) Brown further explains that "[ o ]nee the forward schedule of changes is generated, CHAMPS interfaces closely with a multilayer provisioning system to automate the implementation of that forward schedule of changes." (Id.) Although the Examiner cited the CHAMPS system of Brown, which schedules based on optimization using mathematical scheduling theory, the Examiner has provided an insufficient explanation as to why such scheduling corresponds to the selection of a selected best practice (SBP) from a plurality of best practices (PBPs) based on a best practice precedence (BPP). Therefore, the Examiner has provided insufficient evidence to support a finding that Brown discloses the limitation "the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP." Accordingly, we are persuaded by Appellants' argument that "according to the teachings of Brown, the scheduler merely assigns tasks for workflows to available resources according to the precedence constraints relating to the tasks" and thus, "Brown does not teach or suggest that the 7 Appeal2013-002611 Application 12/261, 7 60 scheduler or any other type of algorithm is used to select a selected best practice from a plurality of best practices based on best practice precedence." (App. Br. 14.) Thus, we do not agree with the Examiner that Brown describes the limitation "the algorithm being executable to select a selected best practice (SBP) from the PBPs based on the BPP." Therefore, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 102(b). Claims 2, 3, 6, and 7 depend from independent claim 1. We do not sustain the rejection of claims 2, 3, 6, and 7 under 35 U.S.C. § 102(b) for the same reasons discussed with respect to independent claim 1. Independent claims 8 and 15 recites limitations similar to those discussed with respect to independent claim 1. We do not sustain the rejection of claims 8 and 15, as well as dependent claims 9, 10, 13, 14, 16, 17, 20, and 21, for the same reasons discussed with respect to claim 1. § 103 Rejection-Brown and Wieringa Claims 4, 5, 11, 12, 18, and 19 depend from independent claims 1, 8, and 15. Wieringa was cited by the Examiner for teaching the additional features of claims 4, 5, 11, 12, 18, and 19. (Ans. 9--10.) However, the Examiner's application of Wieringa does not cure the above noted deficiencies of Brown. DECISION The Examiner's decision rejecting claims 1-7 under 35 U.S.C. § 101 is reversed. 8 Appeal2013-002611 Application 12/261, 7 60 The Examiner's decision rejecting claims 1-20 under 35 U.S.C. §§ 102 and 103 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation