Ex Parte Sewak

Patent Trial and Appeal Board

Oct 30, 2018

14639182 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/639,182 03/05/2015
11601 7590 11/01/2018
IBM Corporation - Endicott Drafting Center
SVLIPLAW
650 Harry Road
9UVA/J2-715
San Jose, CA 95120-6099
FIRST NAMED INVENTOR
Mohit Sewak
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.
IN920140037US2 7188
EXAMINER
W AESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MO HIT SEW AK
Appeal2018-005001
Application 14/639,182 1
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 4--7. Claims 2 and 3 were cancelled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 This Appeal is related to Appeal 2018-005052 (Application 14/287,298)
and is directed to the same underlying invention and issues.
2 According to Appellant, the real party in interest is International Business
Machines Corporation. App. Br. 3.
Appeal2018-005001
Application 14/639,182
STATEMENT OF THE CASE
Appellant's invention relates to generating predictive metadata for
business forecasting. Spec. ,r 1. Exemplary claim 1 under appeal reads as
follows:
1. A method for business forecasting, comprising:
receiving, by one or more processors, one or more sets of
business metrics, wherein at least one of the one or more sets of
business metrics comprises a set of recorded events;
receiving, by the one or more processors, a first metadata
descriptor for a first set of business metrics of the one or more
sets of business metrics, wherein the first metadata descriptor
indicates that the first set of business metrics has a non-
predetermined trend;
receiving, by the one or more processors, a second
metadata descriptor for a second set of business metrics of the
one or more sets of business metrics, wherein (i) the second
metadata descriptor indicates that the second set of business
metrics has a predetermined trend; and (ii) the second metadata
descriptor indicates an expressional relationship including more
than one set of the one or more sets of business metrics;
in response to the first metadata descriptor indicating that
the first set of business metrics describes the non-predetermined
trend, preparing, by the one or more processors, a third set of
business metrics for prediction the third set of business metrics
is a forecast of the first set of business metrics;
predicting, by the one or more processors, one or more
values of the third set of business metrics based, at least in part,
on (a) one or more values of the first set of business metrics;
and (b) one or more statistical models;
in response to the second metadata descriptor indicating
that the second set of business metrics describes the
predetermined trend, determining, by the one or more
processors, one or more values for a fourth set of business
metrics based, at least in part, on the expressional relationship
indicated by the second metadata descriptor, wherein (i) the
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Application 14/639,182
fourth set of business metrics is a forecast of the second set of
business metrics; and (ii) the one or more values are determined
without the one or more statistical models; and
generating, by the one or more processors, a report
including the predicted one or more values of the third set of
business metrics and the determined one or more values for a
fourth set of business metrics.
REFERENCES and REJECTIONS
Claims 1 and 4--7 are provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 8, 11-15, and
18-20 of co-pending Application No. 14/287 ,298. See Final Act. 4--6. 3
Claims 1 and 4--7 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more. See Final Act. 6-
10.
Claims 1 and 4--7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schuster et al. (US 2014/0114909 Al; published Apr. 24,
2014) ("Schuster"), Brocklebank (US 2010/0257025 Al; published Oct. 7,
2010) ("Brocklebank"), and Cardno et al. (US 2011/0261049 Al; published
Oct. 27, 2011) ("Cardno"). See Final Act. 11-17.
3 The Final Action indicates that the double-patenting rejection is a non-
statutory rejection, but then also indicates that the rejection is under
35 U.S.C. § 101 as claiming the same invention, which is a statutory
rejection. See Final Act. 4--6. We treat the double-patenting rejection as a
non-statutory rejection.
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PRINCIPLES OF LAW
Patent-Eligible Subject Matter
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 71-72
(2012)). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). See id. If so, a further
determination must be made to consider the elements of each claim both
individually and "as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a patent-eligible
application. Id. "The question of whether a claim element or combination
of elements is well-understood, routine and conventional to a skilled artisan
in the relevant field is a question of fact." Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).
Obviousness
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
show obviousness. See KSR Int'! Co. v. Teleflex Co., 550 U.S. 398, 415-16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
("KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.").
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ANALYSIS
Double Patenting Rejection
Appellant has not identified any errors in the Examiner's findings
regarding the non-statutory double patenting rejection. See Appeal Br. 12-
24. "If an appellant fails to present arguments on a particular issue - or,
more broadly, on a particular rejection - the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection." Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Accordingly, we summarily affirm the double patenting rejection.
Rejection Under 35 US.C. § 101
Independent claim 1 recites a method for business forecasting, and is,
therefore, directed to one of the four statutory categories of patentability
enumerated by 35 U.S.C. § 101 (process, machine, manufacture, or
composition of matter). Applying the first part of the Alice analysis, the
Examiner determines the claims are directed to an "idea of itself' (i.e., a
combination of collecting information, analyzing the collected information,
and transmitting the analyzed information), one of the four types of abstract
ideas set forth in Alice. See Final Act. 6-8; see also Ans. 4. As further
determined by the Examiner, the combination of collecting information,
analyzing the collected information, and transmitting the analyzed
information was previously identified by the Federal Circuit as being a
patent-ineligible abstract idea. See Final Act. 8 (citing Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). Applying the
second part of the Alice analysis, the Examiner finds the claims do not
include additional elements that are sufficient to amount to significantly
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more than the abstract idea because the additional elements are generic
computer components claimed to perform their basic functions of storing,
retrieving, sending, and processing data, and do not add meaningful limits to
practicing the abstract idea. See Final Act. 8-10; see also Ans. 6. 4
Beginning with the first step of the Alice analysis, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
concepts," including abstract ideas. Alice, 134 S. Ct. at 2355. In performing
this determination, we ask whether the focus of the claims is on a specific
asserted improvement in computer capabilities or, instead, on a process that
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59).
Appellant argues claims 1 and 4--7 are not directed to an abstract idea,
and instead, are directed toward a particular solution that does not preempt
all implementations of "collecting information, analyzing the collected
information, and transmitting the analyzed information." App. Br. 12-13.
As argued by Appellant, the Final Office Action fails to properly take the
recited features of the claims into consideration, and instead "paraphrases
the features of claims 1 and 4--7 in a way that would apply to any computer-
implemented process or method." App. Br. 13. Appellant further argues a
specific technological feature of the claims provides an improvement to
computing performance, and thus, the claims are similar to the claims at
4 Although the Examiner's findings are explicitly directed to independent
claim 1, the Examiner further finds: dependent claims 4--7 contain the
identified abstract idea and no additional elements, when considered
individually or in combination, that are significantly more for the reasons
provided regarding claim 1. See Final Act. 10.
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issue in both Enfzsh and McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). See App. Br. 13-17.
We are not persuaded by Appellant's arguments. Considering the
recited elements of the claims in light of Appellant's Specification, we agree
with the Examiner's findings that the claims are directed to collecting
information regarding business metrics, analyzing the collected information,
and transmitting the analyzed information, which is an idea of itself and
which is similar to abstract ideas previously identified by courts. See
Electric Power Group, 830 F.3d at 1353-54 (claims focus on the abstract
idea of collecting information, analyzing it, and displaying certain results of
the collection and analysis); see also Intellectual Ventures I LLC v. Erie
Indem.Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (affirming that the
invention is drawn to the abstract idea of "creating an index and using that
index to search for and retrieve data").
Appellant's argument that the claims do not preempt any alleged
abstract idea and are, therefore, patent-eligible is not persuasive because the
Federal Circuit has made clear that "the absence of complete preemption
does not demonstrate patent eligibility" of a claim. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Further, we
disagree with Appellant's argument that the Examiner has failed to set forth
a prima facie case that the claims are patent ineligible. As described above,
the Examiner has characterized the claims and analogized to previous court
cases holding that a claim is patent ineligible for being directed to an
abstract idea. See Final Act. 6-8. As this point, the Examiner has shifted
the burden to Appellant to persuasively establish that the claims are not
directed to an abstract idea. Although Appellant identifies claim elements,
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such as "the assignment and identification of metadata descriptors to certain
business metrics," and "the resulting processing of metrics based on [the]
type of metadata descriptors," Appellant fails to persuasively establish how
the recited claim elements demonstrate that the claims are not directed to an
abstract idea. App. Br. 13
Further, we disagree with Appellant's contention that the claims are
directed to a specific improvement in the way computers operate, similar to
the claims at issue in Enfish, rather than an abstract idea. In Enfzsh, in
holding that the claims were patent-eligible, the court stated that the claims
recited a specific data structure (i.e., a self-referential table for a computer
database) that allowed the computer database to realize specific operational
improvements (i.e., increased flexibility, faster search times, and smaller
memory requirements). See Enfzsh, 822 F.3d at 1337. Although Appellant
argues the claims are directed to an improvement to computing performance
by directly determining a forecast for a set of business metrics based on
metadata descriptors associated with the metrics as opposed to continually
analyzing the metrics using statistical analysis, claim 1 merely recites "the
one or more values are determined without the one or more statistical
models." We agree with the Examiner that the aforementioned claim
element is merely a design choice regarding how the program runs, and
more specifically, is merely a choice to perform a computer operation that
utilizes less processing of the data by the computer processor. See Ans. 5---6.
Such a choice does not add significantly more to the abstract idea. See
Ans. 6. Thus, contrary to Appellant's assertion, the claims fail to recite an
improvement to the computer system that Appellant argues the claim is
directed to. For similar reasons, Appellant's argument that the claims,
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similar to the claims at issue in McRO, are directed to technological
improvement, is also not persuasive.
Because we conclude that the claims are directed to an abstract idea,
we tum to the next step of the Alice analysis. In step two, as previously
discussed, we 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."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). Appellant did not
provide any arguments in addition to the arguments previously described.
See App. Br. 11-17.
Considering the recited elements of the claims in light of Appellant's
Specification, we agree with the Examiner's findings that the additional
elements are generic computer components recited as performing generic
computer functions that are well-understood, routine and conventional
activities, and amount to no more than implementing the abstract idea with a
computerized system. See Final Act. 8-1 O; see also Ans. 5---6. Evidence
supporting the Examiner's finding that the recited generic computer
functions performed by the claimed generic computer components are well-
understood, routine and conventional is found in Appellant's Specification.
For example, "[ an analytics device] can be any computing device or a
combination of devices ... capable of executing [the disclosed programs],"
"[ the analytics device] ... may ... include internal and external hardware
components as depicted and described in further detail," and
computer readable program instructions may be provided to a
processor of a general purpose computer, special purpose
computer, or other programmable data processing apparatus to
produce a machine, such that the instructions, which execute
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via the processor of the computer or other programmable data
processing apparatus, creates means for implementing the
functions/acts specified in the flowchart and/or block diagram
block or blocks.
See Final Act. 9 ( citing Spec. ,r 21 ); see also Ans. 6 ( citing Spec. ,r 17).
Therefore, considering the elements of the claims both individually and in
combination, we conclude there are no additional elements that transform
the nature of the claims into a patent-eligible application. See Alice,
134 S. Ct. at 2355.
Therefore, we are not persuaded the Examiner erred in finding claims
1 and 4--7 reciting patent-ineligible subject matter. Accordingly, we sustain
the rejection of claims 1 and 4--7 under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.
Rejection Under 35 USC§ 103
Appellant contends the combination of cited references fails to teach
or suggest "a first metadata descriptor for a first set of business metrics ...
wherein the first metadata descriptor indicates that the first set of business
metrics has a non-predetermined trend,"
a second metadata descriptor for a second set of business
metrics ... wherein (i) the second metadata descriptor indicates
that the second set of business metrics has a predetermined
trend; and (ii) the second metadata descriptor indicates an
expressional relationship including more than one set of the one
or more sets of business metrics,
"predicting ... one or more values of the third set of business metrics based,
at least in part, on (a) one or more values of the first set of business metrics;
and (b) one or more statistical models," and
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in response to the second metadata descriptor indicating that the
second set of business metrics describes the predetermined
trend, determining ... one or more values for a fourth set of
business metrics based, at least in part, on the expressional
relationship indicated by the second metadata descriptor,
wherein (i) the fourth set of business metrics is a forecast of the
second set of business metrics; and (ii) the one or more values
are determined without the one or more statistical models,
as recited in claim 1. See App. Br. 23. Appellant also argues Schuster's
performance metadata fails to include whether a metric is associated with a
predetermined trend or a non-predetermined trend, and thus, Schuster's
performance metadata fails to teach or suggest the claimed first metadata
descriptor and second metadata descriptor. See id. at 19-21. In light of this
deficiency, Appellant asserts Schuster also fails to teach or suggest the
claimed two types of forecasting of business metrics based on the type of
trend indicated by the metadata descriptor (i.e., predicting values of a third
set of business metrics based, at least in part, on one or more statistical
models, and determining values of a fourth set of business metrics based, at
least in part, on the expressional relationship indicated by a second metadata
descriptor, wherein the values are determined without the one or more
statistical models). See id. Lastly, Appellant argues Brocklebank and
Cardno, whether considered individually or in combination with Schuster,
fail to cure the deficiencies of Schuster. See App. Br. 21-22.
For the foregoing reasons presented in Appellant's Appeal Brief, we
are persuaded by Appellant's contentions. Therefore, on this record, we do
not sustain the rejection of claim 1 under 35 U.S.C. § 103, nor of claims 4--7
which depend from claim 1.
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DECISION
We summarily affirm the Examiner's rejection of claims 1 and 4--7 on
the ground of non-statutory double patenting.
We affirm the Examiner's rejection of claims 1 and 4--7 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
We reverse the Examiner's rejection of claims 1 and 4--7 under
35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed.
See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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