Ex Parte Sellers et al

Patent Trial and Appeal Board

Nov 17, 2017

12576369 (P.T.A.B. Nov. 17, 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.
12/576,369 10/09/2009 Sabrina Sellers DC-15117 1979
33438 7590 11/21/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/21/2017 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):
tmunoz @ tcchlaw. com
heather@tcchlaw.com
US PTO @ dockettrak. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SABRINA SELLERS and TRISHA COLLIER
Appeal 2016-000034
Application 12/576,3691
Technology Center 3600
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision to reject claims 1, 3—7, 9-13, and 15—18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Dell Products L.P.
Appeal Brief filed February 3, 2015, hereafter “Appeal Br.,” 1.
Appeal 2016-000034
Application 12/576,369
BACKGROUND
The invention relates to information handling system and, more
specifically, to a usage based process for selecting hardware and software in
a build to order environment. Specification, hereafter “Spec.,” Abstract, 11.
The usage based process presents a survey to a customer and uses
information derived from the survey, including preferred configuration, to
automatically populate an information handling system configuration. Id.
14.
Representative method claim 1 is reproduced from page 6 of the
Appeal Brief (Claims App.) as follows:
1. A system for enabling configuration of an information
handling system comprising:
a configurator, the configurator configuring a system with
options selected according to user input;
a survey module, the survey module enabling obtaining
information from a user and identifying a preferred
configuration based upon the information from the user;
an automatic population module, the automatic population
module automatically populating an information handling
system configuration based upon the preferred configuration;
a database, the database receiving information from and
supplying information to the configurator, the survey module
and the automatic population module; and wherein
the automatically populating the information handling
system configuration further comprises performing a
configuration accuracy analysis on the information handling
system configuration to assure that the information handling
system configuration provides a completed and accurately
configured information handling system;
the information from the user comprises information
regarding potential usage of system, types of applications to be
used or documents that will be manipulated by the system, an
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ecosystem in which the system will reside and whether the
system will be coupled to a network and if so the type of
network; and
the information regarding the ecosystem in which the system
will reside further includes information relating to technology
ownership, electronic devices to which the system will be
coupled and whether the system will be part of a home network.
The Examiner rejects claims 1, 3—5, 7, 9-11, 13, and 15—17 under
35 U.S.C. § 102(b) as unpatentable over Hanes,2 and claims 6, 12, and 18
under 35 U.S.C. § 103(a) as unpatentable under Hanes and Official Notice.
Final Action, hereafter “Final Act.,” 2—7, mailed October 9, 2014; Answer,
hereafter “Ans.,” 2, mailed July 16, 2015. In the Answer, the Examiner
enters a new ground of rejection for claims 1, 3—7, 9-13, and 15—18 under
35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 2—\.
Appellants exercise the option to maintain the appeal with the filing of a
Reply Brief, with the Reply Brief addressing each ground of rejection under
37 C.F.R. § 41.39(b)(2). Reply Brief, hereafter “Reply Br.,” 1—2, filed
September 16, 2015.
DISCUSSION
35 U.S.C. §101
The Examiner finds that claims 1, 3—7, 9-13, and 15—18 are directed
to non-statutory subject matter that is an abstract idea because the claims are
directed to enabling configuration of an information handling system.
Ans. 2. Additional claim elements are not found to be significantly more
than the abstract idea because they are no more than: “(i) mere instructions
to implement the idea on a computer, and/or (ii) recitation of generic
2 U.S. Patent Publication No. 2008/0228535 Al, published September 18,
2008.
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computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry.” Id. at 2—3. The Examiner refers to the
Specification that discloses the components of the information handling
device, finding that “this disclosure supports the finding that no more than a
general purpose computer, performing generic computer functions that are
well-understood, routine, and conventional activities previously, known to
the pertinent industry, is required by the claims.” Id. at 3^4 (citing Spec. 1
30).
Appellants argue that the claims are not directed to an abstract idea,
and the Examiner ignores meaningful limitations. Reply Br. 1. Appellants
allege that “the result of claim 1 is to automatically populate an information
handling system configuration based upon the preferred configuration which
can be considered a tangible non-abstract outcome.” Id.
Appellants further argue that, even if the claims are considered an
abstract idea, the claims represent significantly more than an abstract idea.
Reply Br. 2. Appellants allege that “automatically populating an
information handling system configuration based upon the preferred
configuration is significantly more than the mere execution of mathematical
algorithms.” Id. Appellants contend that the recited limitations that include
a configurator, that acts to configure a system with options set from user
input, the use of survey modules, a database, and the automatic population
module, “quality as significantly more than the mere execution of
mathematical algorithms.” Id.
To provide context, 35 U.S.C. § 101 provides that a new and useful
“process, machine, manufacture, or composition of matter” is eligible for
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patent protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappos, 561 U.S. 593, 609 (2010). There are, however, three
limited, judicially created exceptions to the broad categories of patent-
eligible subject matter in § 101: laws of nature; natural phenomena; and
abstract ideas. See Mayo Collaborative Services v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) (“Alice’''), the Supreme Court reiterated the framework set forth
previously in Mayo, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355 (citation omitted).
Under Alice, the first step of such analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
(citation omitted). If it is determined that the claims are directed to a patent-
ineligible concept, 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, 566 U.S. at 79, 78). In
other words, the second step is to “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.’” Id. (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
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After considering Appellants’ arguments and the evidence presented
in this Appeal for the § 101 rejection, we are not persuaded that Appellants
identify reversible error. We add the following for emphasis.
Appellants argue that the “automatic[] population] [of] an
information handling system configuration based upon the preferred
configuration” is a “tangible non-abstract outcome.” Reply Br. 1. The
“configuration” and “configuration process” referred to in the Specification
are directed to a software-based “configurator 118” that includes several
modules and is part of the “commerce application.” See Spec. ^fl[ 13, 16.
The configuration steps are used to select hardware and software, and then
present a link or configuration page that reflects the identification of the
various components for a customer system. See id. ^flf 7, 14, 23, 29. In other
words, “configuration” results in a listing of identified hardware and
software. Actual assembly or fabrication of the system is disclosed as a
subsequent, separate step from “configuration” in the Specification. See id.
19, 25. As such, the invention can be fairly described as being directed to
information handling. Appellants’ argument that the claim is not abstract
because it automatically populates an information handling system
configuration fails to persuade us because this step is also directed to
information handling. The claims are similar to the claims that the Federal
Circuit determined are patent ineligible in Digitech Image Techs., LLC v.
Elecs. For Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (manipulation of
data/information), Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an insurance
organization), and Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1333—34
(Fed. Cir. 2015) (price-determination method involving arranging
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organizational and product group hierarchies). Our reviewing court has
“made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Svcs., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Here, the focus of the claims is on information
management, “and the recited generic computer elements ‘are invoked
merely as a tool.”’ Id. (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335—36 (Fed. Cir. 2016)); see also Versata, 793 F.3d at 1334.
We next consider the Appellants’ arguments concerning whether the
claims as a whole add significantly more to the abstract idea. We find they
do not.
Appellants argue that the individual recited limitations “quality as
significantly more than the mere execution of mathematical algorithms,” and
point to the automatic population of an information handling system
configuration based on a preferred configuration. Reply Br. 2. As discussed
above, the limitations directed to “automatically populating” and
“configuration” merely relate to managing, listing, and presenting
information or data, and the recited steps do not recite limitations that could
move the claims from the abstract to the concrete.
We therefore sustain the Examiner’s rejection of claims 1, 3—7, 9—13,
and 15—18 under § 101.
35 U.S.C.§§ 102, 103
Appellants argue similar issues for all the rejected claims. Appeal
Br. 3—5. Appellants contend that Hanes fails to disclose the claim
limitations associated with configuration accuracy analysis or that
information from the user comprises information on potential uses, types of
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applications to be used or documents to be manipulated, the ecosystem in
which the system will reside, technology ownership, electronic devices to
which the system will be coupled, and whether the system will be part of a
home network. Id. at 4—5. In contrast, the Examiner responds that the
rejection is proper and the argued claim limitations are disclosed in Hanes.
Ans. 4—7 (citing Hanes Tflf 7, 25, 26, 29, 30, 32, 33, 36, 40).
After considering Appellants’ arguments and the evidence presented
in this Appeal for the § 102 rejection, we are persuaded that Appellants
identity reversible error, and we therefore reverse the anticipation rejection.
We add the following for emphasis.
Although an ipsissimis verbis test, i.e., identity of terminology, is not
required, In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990), anticipation is a
question of fact, In re Hyatt, 211 F.3d 1367, 1371—72 (Fed. Cir. 2000), and
can be found only if a single prior art reference discloses every element of
the challenged claim, In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986).
Here, Hanes discloses generally that “surveys are distributed, automated
discovery of a customer present information handling system deployment
environment is generated and data about the customer is gathered” in order
to evaluate a customer’s information handling system deployment needs.
Hanes Tflf 12, 32. Hanes’ disclosures are not specific, however, to some of
the detailed information in the limitations of claim 1, such as, “whether the
system will be coupled to a network and if so the type of network,” and “the
information regarding the ecosystem in which the system will reside . . .
relating to technology ownership, electronic devices to which the system
will be coupled and whether the system will be part of a home network.”
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The Examiner relies on, for instance, the following to support the disclosure
of “home network” as claimed:
The information handling system 100 includes a processor 102,
input/output (I/O) devices 104, such as a display, a keyboard, a
mouse, and associated controllers, a memory 106 including non
volatile memory such as a hard disk drive and volatile memory
such as random access memory (RAM), and other storage
devices 108, such as an optical disk and drive and other
memory devices, and various other subsystems 110, all
interconnected via one or more buses 112. A deployment and
evaluation tool 130 is stored on the memory 106 and executed
by the processor 102,100025, wherein information handling
system supplier schedules resources and provides technical data
to the discovery tool. These tasks are generally performed at the
customer's location (i.e., onsite), 100036)[)].
Ans. 7 (citing Hanes Tflf 25, 36).
Although the portions of Hanes identified disclose that the existing
information handling system can have a variety of components, and a survey
can be performed at the customer’s location, it fails to disclose that the
prospective detailed information about the planned system will have certain
information, such as “whether the system will be part of a home network.”
Thus, we cannot sustain the Examiner’s rejection of independent
claims 1,7, and 13, which contain the same or similar claim limitations to
those discussed above, and claims 3—5, 9—11, and 15—17, that depend
therefrom under 35 U.S.C. § 102(b). We also cannot sustain the rejection of
claims 6, 12, and 18 under 35 U.S.C. § 103(a) because Official Notice is
used by the Examiner to teach the additional limitations only of the
dependent claims, and fails to remedy the prior art’s deficiencies as to the
teachings of the independent claims depended from. See Final Act. 6—7.
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SUMMARY
The rejection of claims 1, 3—7, 9-13, and 15—18 under 35 U.S.C.
§ 101 is affirmed.
The rejection of claims 1, 3—5, 7, 9-11, 13, and 15—17 under
35 U.S.C. § 102(b) is reversed.
The rejection of claims 6, 12, and 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).
AFFIRMED
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