Ex Parte Segmuller et al

Patent Trial and Appeal Board

Mar 20, 2017

12791353 (P.T.A.B. Mar. 20, 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.
12/791,353 06/01/2010 WOLFGANG SEGMULLER YOR920100130US1
(163-335)
2503
49267 7590 03/22/2017
TTTTTTNTTAN fr RTTFTTO P C EXAMINER
401 Broadhollow Road, Suite 402
Melville, NY 11747
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG SEGMULLER, MALGORZATA STEINDER,
and IAN N. WHALLEY
Appeal 2014-0006191
Application 12/791,3532
Technology Center 3600
Before HUBERT C. LORIN, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner’s decision
rejecting claims 9—25. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND of rejection under
37 C.F.R. §41.50(b).
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed Mar. 29,
2013), the Examiner’s Answer (“Ans.,” mailed July 10, 2013), and the Final
Office Action (“Final Act.,” mailed Dec. 31, 2012).
2 Appellants identify International Business Machines Corporation as the
real party in interest. Br. 3.
Appeal 2014-000619
Application 12/791,353
CLAIMED SUBJECT MATTER
Appellants’ “invention relates to virtualized system management and
more particularly to a system and method configured to account for usage
rights and limitations in managing a virtualized environment.” Spec. 11.
Claim 9, reproduced below with added bracketed notations, is illustrative of
the claimed subject matter:
9. A method for managing resources in a virtualized
environment, comprising:
[(a)] representing constraints for a set of entitlements in
computer storage media;
[(b)] determining, for a computing entity to be placed,
how many and what type of entitlements are permitted; and
[(c)] computing entitlement usage of a current candidate
placement solution using a processor as a placement program
progresses,
[(d)] such that a resulting placement solution does not
exceed the entitlements that are available.
Br. 24 (Claims App.).
REJECTIONS3
Claims 9—17 are rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 9—25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nickolov (US 2009/0276771 Al, pub. Nov. 5, 2009) and Astete (US
2010/0138830 Al, pub. June 3, 2010).
3 “The Examiner finds [Appellants’] argument persuasive and withdraws his
35 USC 112, 2nd rejection for claims 9-10, 13, 18-19 and 21.” Ans. 2
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Application 12/791,353
ANALYSIS
Non-Statutory Subject Matter Rejection
Claims 9 17
We are not persuaded (Br. 9—10) the Examiner erred in asserting that
claims 9—17 are directed to non-statutory subject matter. Ans. 2—3.
At the outset, we note § 101 case law has developed significantly
since the briefing was submitted by Appellants and the Examiner. The
Supreme Court decision in Alice Corp. Party Ltd. v. CIS Bank
International, 134 S. Ct. 2347 (2014) is now controlling.
To that end, we begin our analysis at step one of Alice's two part
framework: whether the claims are “directed to” an abstract idea. Alice, 134
S. Ct. at 2355. In Alice, the Supreme Court explained that “fundamental
economic practice[s]” and other “method[s] of organizing human activity”
are not patent-eligible because they are abstract ideas. Id. at 2356—57
(quoting Bilski v. Kappos, 561 U.S. 593, 611 (2010)).
Here, the claim 9 is directed to a method for managing resources in a
virtualized environment, including the steps “representing constraints ... in
computer storage media;” “determining . . . entitlements . . . permitted;” and
“computing entitlement usage . . . using a processor.” Claim 9 is directed to
the abstract idea of managing resources based on usage rights. Appellants’
Specification explains that the present invention relates to “a system and
method configured to account for usage rights and limitations in managing a
virtualized environment.” Spec. 1, 45 (“FIG. 1, a system 101 is
illustratively depicted which takes usage rights, limits and constraints into
account to provide for integrated management in a virtualized
environment.”). The focus of claim 9 is merely to invoke a processor as a
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Application 12/791,353
tool to execute the fundamental economic practice of resource management
based on usage rights. We therefore find the claimed invention here to be
directed to ineligible fundamental economic practices, like the inventions
related to economic practices held ineligible in Bilski v. Kappos, 561 U.S.
593 (2010) (concept of hedging risk and the application of that concept to
energy markets), OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed.
Cir. 2015) (automatically determining prices for products by testing prices
and gathering statistics) and Versata Development Group v. SAP America,
Inc., 793 F.3d 1306 (Fed.Cir. 2015) (determining a price using organization
and product group hierarchies).
Having determined that claim 9 is directed to an abstract idea, we
next address whether the claim recites any “inventive concept” sufficient
to ‘“transform the nature of the claim’ into a patent-eligible application”
under step of the Alice framework. Alice, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297
(2012)).
Claim 9 recites a method for managing resources in a virtualized
environment by representing constraints for a set of entitlements in computer
storage media; determining the entitlements permitted for an entity; and
computing entitlement usage using a processor, such that a resulting
solution does not exceed the available rights. The claim merely implements
long known economic practices related to management of resources based
on usage rights. The steps of claim 9 do not transform the abstract idea
embodied in the claim; they simply implement it. The processor of claim 9
is not required for carrying out the determining step. Only the computing
step of claim 9 recites “using a processor.” Appellants’ Specification
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indicates that the processes described herein may be implemented on “a
processor of a general purpose computer.” Spec. 141. In light of the
Specification, the claimed “processor” is reasonably construed as a general
purpose computer. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is not enough for
patent eligibility.” Alice, 134 S. Ct. at 2358. Accordingly, when considered
“both individually and ‘as an ordered combination,”’ claim 9 amounts to
nothing more than an attempt to patent the abstract idea embodied in the
recited steps. See id. at 2355.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of claim 9, and dependent claims 10-17, which are not
argued separately.
New Ground of Rejection under 35 U.S.C. § 101
Claims 18—25
We note that a claim directed to a “computer readable storage
medium,” despite its format, should be treated no differently from the
comparable process claims held to be patent ineligible under § 101. Indeed,
the Supreme Court cautioned that the form of the claims should not trump
basic issues of patentability. See Parker v. Flook, 437 U.S. 584, 593
(1978) (advising against a rigid reading of §101 that “would make the
determination of patentable subject matter depend simply on the draftsman’s
art and would ill serve the principles underlying the prohibition against
patents for ‘ideas’ or phenomena of nature.”). Independent claim 18 is
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substantially similar to independent claim 9, and fails to satisfy the Alice
framework for the same reasons.
Therefore, we reject claim 18 under 35U.S.C. § 101. Claims 19—25
depend from claim 18 and add nothing more than data gathering steps or
merely reciting generic computer instructions performing conventional
functions that courts have routinely found insignificant to transform abstract
ideas to those into patent-eligible inventions. As such, we reject claims 19—
25 under 35 U.S.C. § 101.
Obviousness
Appellants argue independent claims 9 and 18 as a group (Br. 16—22).
We select claim 9 as representative. Thus, claim 18 stands or falls with
claim 9.
In contesting the rejection of claim 9, Appellants acknowledge that
Nickolov tracks and reports “usage information relating to the usage of the
licensed virtual appliance” but argue that “the cited portions of Nickolov,
CANNOT reasonably be interpreted as disclosing ‘entitlement usage,’ as in
claims 9 and 18.” Id. at 17. According to Appellants, “entitlements may
generally refer to the right to use a product or service. . . . [as] consistently
used throughout the present Specification.” Id. at 17—18 (citing Spec. 1 52
(“A set of changes ... is selected that can ensure that the system is kept
within the customer's license entitlements.”). Appellants conclude that
“resource usage, as discussed in the cited portions of Nickolov, fails to teach
or even remotely suggest ‘entitlement usage.’” Id. at 18.
We are not persuaded of error because Appellants do not adequately
explain why the cited prior art disclosure is deficient as interpreted by the
Examiner. For instance, the Examiner explains how the claimed constraints
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for a set of entitlements is interpreted in view of Appellants’ disclosure and
the cited teachings of Nickolov. See Ans. 4—5 (first citing Spec. Ull, 70;
then citing Nickolov H 396, 399, 401, 989, 998). The Examiner also finds
“[t]he quotas taught in Aslele, which uses a ‘usage’ and ‘limit’ analysis, is
interpreted by the Examiner to be another example of representing
constraints for a set of entitlements in computer storage media.'1'’ Id. at 5.
Additionally, in an effort to merely elaborate upon the
teachings that were previously cited, [the Examiner asserts that]
the cited prior art of Nickolov teaches the assignment of
attributes that determine a minimum and maximum amount of
processing power, memory and network bandwidth that can be
allocated to a “given instance” of a virtual machine [0216].
Id. at 7.
Providing further explanation in response to Appellants’ arguments,
[t]he Examiner interprets when the user decides upon a “license
agreement” and it’s [sic] “usage terms/conditions” this is an
example of defining comyutins entitlement usase of a current
candidate placement solution using a processor as a placement
program progresses because it is the license terms/conditions
that determines where a given virtual machine should run at a
given time. Additionally, the cited prior art of Nickolov teaches
the use of statistics associated with the virtual appliance (e.g.
average downtime) [0541], Additionally, Nickolov teaches the
supplying the user with different types of
resource/service/license usage, and then the tracking of usages
within a plan parameter and the usages that exceeds a plan
parameters [1251]. The Examiner interprets this tracking of
usage in an effort to meet predefined compliance terms as being
an example of comyutins entitlement usase of a current
candidate placement solution using a processor as a placement
program progresses.
Id. at 9.
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On the record before us, we are not apprised of error because apart
from disagreeing with the Examiner, Appellants have not offered persuasive
reasoning or evidence to dispute the Examiner’s actual findings and
interpretation. See also Ans. 9—10 (citing additional findings as to Astete in
refuting Appellants’ position). 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.”).
We also are unpersuaded by Appellants’ contention that “[mjerely
because the cited portions of Astete allegedly disclose ‘a resulting placement
solution does not exceed the entitlements that are available’ would not make
it obvious for one of ordinary skill in the art to combine it with” Nickolov.
Br. 20. Appellants offer no substantive arguments to rebut the Examiner’s
stated rationale for combining the references in support of the ultimate legal
conclusion of obviousness. See Final Act. 12.
Accordingly, we sustain the rejection of independent claim 9 as
obvious over Nickolov and Astete. We also sustain the rejection of
independent claim 18, which falls with independent claim 9. We sustain the
rejection of dependent claims 10-17 and 19—25, which are not separately
argued except for their dependency on independent claims 9 and 18. See
Br. 22.
DECISION
The Examiner’s rejection of claims 9—17 under 35 U.S.C. § 101 is
AFFIRMED.
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Application 12/791,353
We enter a NEW GROUND OF REJECTION of claims 18-25 under
35 U.S.C. § 101.
The Examiner’s rejection of claims 9—25 under 35 U.S.C. § 103(a) is
AFFIRMED.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that 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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance will be deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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