Ex Parte Sewak

Patent Trials and Appeals Board

Oct 30, 2018

14287298 - (D) (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/287,298 05/27/2014
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.
IN92014003 7US 1 2162
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
Appeal2018-005052
Application 14/2 87 ,298 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 8, 11-15, and 18-20. Claims 1-7, 9, 10, 16, and
17 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 This Appeal is related to Appeal 2018-005001 (Application 14/639,182)
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.
Appeal2018-005052
Application 14/287 ,298
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:
8. A computer program product for business forecasting, the
computer program product comprising:
one or more computer-readable storage media and
program instructions stored on the one or more computer-
readable storage media, the program instructions comprising:
program instructions to receive 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;
program instructions to receive 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;
program instructions to receive 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, program instructions to
prepare a third set of business metrics for prediction the
third set of business metrics is a forecast of the first set of
business metrics;
program instructions to predict 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;
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in response to the second metadata descriptor
indicating that the second set of business metrics describes
the predetermined trend, program instructions to
determine 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; and
program instructions to generate 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 8, 11-15, and 18-20 are provisionally rejected on the ground
of non-statutory double patenting as being unpatentable over claims 1 and 4--
7 of co-pending Application No. 14/639,182. See Final Act. 5-7. 3
Claims 8, 11-15, and 18-20 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. See Final
Act. 7-12.
Claims 8 and 11-14 stand rejected under 35 U.S.C. § 101 as not being
in one of the four statutory categories of invention. See Final Act. 12-13.
Claims 8, 11-15, and 18-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Schuster et al. (US 2014/0114909 Al; published
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. 5-7. We treat the double-patenting rejection as a
non-statutory rejection.
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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. 13-19.
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)
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("KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.").
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-
26. "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 of Claims 8 and 11-14 Under 35 USC§ 101 for
failure to be in one of the four statutory categories of invention
The Examiner determines that "claim 8 encompasses within its scope
signals per se," and thus, is not directed to one of the four statutory
categories of patentability. See Final Act. 12-13. However, we agree with
Appellant that paragraph 13 of Appellant's Specification, as a whole,
provides a clear disclaimer to the scope of the claimed "computer readable
storage medium" to not include transitory signals. See App. Br. 19-20
(citing Spec. ,r 13). Thus, contrary to the Examiner's finding, claim 8 is
directed to one of the four statutory categories of patentability. Accordingly,
we do not sustain the rejection of claims 8 and 11-14 under 35 U.S.C. § 101
as not being in one of the four statutory categories of invention.
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Rejection of Claims 8, 11-15, and 18-20 Under 35 USC
§ 101 as being directed to a judicial exception without
significantly more
Independent claims 8 and 15 recite a computer program product and
computer system for business forecasting and are, 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 finds 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. 8-9; see also Ans. 3. As further found 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. 9 ( 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 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. 9-11; see also Ans. 5. 4
4 Although the Examiner's findings are explicitly directed to independent
claim 8, the Examiner further finds: (a) independent claim 15 contains the
identified abstract idea, where the additional elements are not significantly
more for the reasons provided regarding claim 8; and (b) dependent claims
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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 8, 11-15, and 18-20 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. 13-14. Appellant further argues the Final Office Action fails to properly
take the recited features of the claims into consideration, and instead
"paraphrases the features of claims 8, 11-15, and 18-20 in a way that would
apply to any computer-implemented process or method." App. Br. 14.
Appellant also asserts a specific technological feature of the claims provides
an improvement to computing performance, and thus, the claims are similar
to the claims at issue in both Enfzsh and McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). See App. Br. 14--18.
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
11-14 and 18-20 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 8. See Final
Act. 11.
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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. 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. 8-9. As such, the Examiner has reasonably
shifted the burden to Appellant to persuasively establish that the claims are
not directed to an abstract idea. Although Appellant identifies claim
elements, 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. 13-14.
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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 8 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 are
directed to technological improvement, similar to the claims at issue in
McRO, 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
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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. 12-18.
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. 9-11; see also Ans. 5. 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
which discloses that "[ 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
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. 10 ( citing Spec. ,r 21 ); see also Ans. 5 ( citing Spec. ,r 17).
Therefore, considering the elements of the claims both individually and in
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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
8, 11-15, and 18-20 reciting patent-ineligible subject matter. Accordingly,
we sustain the rejection of claims 8, 11-15, and 18-20 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 ... wherein the first metadata
descriptor indicates that [a] first set of business metrics has a non-
predetermined trend," "a second metadata descriptor ... wherein (i) the
second metadata descriptor indicates that [a] second set of business metrics
has a predetermined trend; and (ii) the second metadata descriptor indicates
an expressional relationship," "program instructions to predict one or more
values of [a] 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
in response to the second metadata descriptor indicating that the
second set of business metrics describes the predetermined
trend, program instructions to determine 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,
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as recited in claim 8, and similarly recited in claim 15. See App. Br. 26. As
argued by Appellant, Schuster's performance metadata fails to include
whether a business 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. Id. at 22-24. In light of this deficiency, as argued by Appellant,
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.
Appellant further argues Brocklebank and Cardno, whether considered
individually or in combination with Schuster, fail to cure the deficiencies of
Schuster. Id. at 24--25.
For the foregoing reasons presented in Appellant's Appeal Brief, we
are persuaded by Appellant's contention. Therefore, on this record, we do
not sustain the rejection of claims 8 and 15 under 35 U.S.C. § 103, nor of
claims 11-14, and 18-20 which depend from one of claims 8 and 15.
DECISION
We summarily affirm the Examiner's rejection of claims 8, 11-15,
and 18-20 on the ground of non-statutory double patenting.
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We affirm the Examiner's rejection of claims 8, 11-15, and 18-20
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
We reverse the Examiner's rejection of claims 8 and 11-14 under
35 U.S.C. § 101 as not being in one of the four statutory categories of
invention.
We reverse the Examiner's rejection of claims 8, 11-15, and 18-20
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 may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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