Ex Parte Sieja et al

Patent Trial and Appeal Board

Nov 9, 2018

14091581 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/091,581 11/27/2013
4743 7590 11/14/2018
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Andrew Henry Sieja
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.
32646/50549 1099
EXAMINER
HARMON, COURTNEY N
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW HENRY SIEJA and
KEITH LOREN KAMINSKI 1
Appeal2018-002216
Application 14/091,581
Technology Center 2100
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is KCURA LLC. See
App. Br. 4.
Appeal2018-002216
Application 14/091,581
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-8, 10-17, 19-26, 28-35, 37--44, and 46-53. Claims 9, 18, 27,
36, 45, and 54 are canceled. Non-Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm. 2
THE INVENTION
The claims are directed to indexing and searching documents. Spec.,
Title. Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method of indexing a collection of documents, the method
compnsmg:
dividing the collection of documents into a plurality of N
batches;
receiving, via a user interface, a first number indicative of
a first amount of hardware servers;
creating a first isolated area on the hardware servers of the
first amount of hardware servers, including creating an app
domain on each hardware server of the first amount of hardware
servers;
indexing the plurality of N batches using the respective
app domains of the first amount of hardware servers;
receiving, via the user interface, a second number
indicative of a second amount of hardware servers, the second
amount greater than the first amount;
creating a second isolated area on the hardware servers of
the second amount of hardware servers, wherein at least a portion
of the first isolated area is included in the second isolated area,
2 We refer to the Specification, filed November 27, 2013 ("Spec."); the Non-
Final Office Action, mailed May 17, 2017 ("Non-Final Act."); Appeal Brief,
filed August 11, 2017 ("App. Br."); the Examiner's Answer, mailed
November 2, 2017 ("Ans.") and the Reply Brief, filed December 21, 2017
("Reply Br.").
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including creating an additional app domain on each hardware
server of the second amount of hardware servers that is not
included in the first isolated area; and
after creating the second isolated area:
indexing the plurality of N batches using the respective
app domains on the first amount of hardware servers, and while
indexing the plurality of N batches using the respective app
domains on the first amount of hardware servers, indexing the
plurality of N batches using the respective additional app
domains on the hardware servers of the second amount of
hardware servers that are not included in the first isolated area.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Maloney et al
Birdsall et al.
York et al.
Bushen
Raufman
US 2006/0069672 Al
US 2011/0158252 Al
US 2013/0275429 Al
US 2014/0019703 Al
US 2014/0129530 Al
REJECTIONS
The Examiner made the following rejections:
Mar. 30, 2006
June 30, 2011
Oct. 17, 2013
Jan. 16,2014
May 8, 2014
Claims 1-8, 10-17, 19-26, 28-35, 37--44, and 46-53 stand rejected
under 35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception without significantly more. Non-Final Act. 3-5.
Claims 1, 10, 19, 28, 37, and 46 stand rejected under 35 U.S.C. § 103
as being unpatentable over Birdsall and York. Non-Final Act. 5-21.
Claims 6-8, 15, 16, 24--26, 33-35, 42--44, and 51-53 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Birdsall, York, and
Maloney. Non-Final Act. 21-24.
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Claims 2, 3, 5, 11, 12, 14, 20, 21, 23, 29, 30, 32, 38, 39, 41, 47, 48,
and 50 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Birdsall, York, and Bushen. Non-Final Act. 24--28.
Claims 4, 13, 22, 31, 40, and 49 stand rejected under 35 U.S.C. § 103
as being unpatentable over Birdsall, York, Bushen, and Raufman. Non-
Final Act. 28-30.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94
USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
A. 35 U.S.C. § 101
Appellants do not separately argue the claims. See App. Br. 16-20.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants do not persuade us the Examiner errs in determining the
claims are patent-ineligible pursuant to the two-part test enumerated in Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)). See Non-Final
Act. 3-5; Ans. 2-7. We adopt the Examiner's reasoning with respect to this
rejection, to the extent consistent with our analysis; we add the following for
emphasis.
Step One
Appellants argue the Examiner errs in determining the claims are
directed to an abstract concept because the claims recite particular solutions
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to the problems of indexing and searching large databases of documents.
App. Br. 17. Particularly, Appellants contend the claims recite:
( 1) batches of documents are indexed ( or searched) on app
domains created on distinct hardware servers,
(2) two isolated areas are created on hardware servers, where at
least a portion of a first, smaller isolated area is included
in a second, larger isolated area,
(3) batches of documents are indexed ( or searched) on app
domains on hardware servers of the first isolated area
after the second isolated area is created, and
( 4) batches of documents are indexed ( or searched) on app
domains on hardware servers of the second isolated area
that are not included in the first isolated area while
batches of documents are indexed ( or searched) on app
domains on hardware servers of the first isolated area.
App. Br. 17-18 (formatting added).
The Examiner determines the claims are directed to the abstract idea
of indexing data. Non-Final Act. 3--4; Ans. 3. According to the Examiner,
"[t]he instant claims are directed at creating an index to search for and
retrieve data; the 'problem' that they solve is one of analysis and retrieval of
information as the court stated in Intellectual Ventures I LLC v. Erie
Indemnity Co. [850 F.3d 1315 (Fed. Cir. 2017)]." The Examiner also
favorably compares the rejected claims to claims determined by the courts to
be abstract as directed to the manipulation of information and to a mental
process that "can be performed in the human mind, or by a human using a
pen and paper." Ans. 6, citing Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016).
We agree with the Examiner's determination. Independent claims 1,
10, and 19 recite steps for indexing a collection of documents. Although
independent claims 28, 37, and 46 instead recite searching a collection of
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documents, Appellants neither argue these claims separately nor emphasize
any distinction between indexing documents and searching documents that is
relevant to the determination of whether the ideas are abstract. Furthermore,
we note indexing of documents preparatory to a search and performance of a
search of the documents are related activities consistent with, for example,
the decision in Intellectual Ventures I LLC v. Erie Indemnity Co. ("Erie") as
discussed below.
Appellants disclose a problem related to the indexing and searching of
large collections of documents using parallel computing resources by
allowing a user to "change the number of computing resources dedicated to
the indexing [ or searching] process without interrupting the indexing [ or
searching] process." Spec. ,r 1 7. Although directed to the use of
"computing" resources, Appellants do not explain why either the problem
itself or the solution to the problem is unique to computer technology rather
than to the abstract idea itself of indexing and searching. Instead, the claims
are directed to the general field of indexing and searching documents by
managing resources rather than to addressing a specific technical problem
associated with the management and/ or use of computer resources in
particular.
The Federal Circuit in Erie determined "the abstract idea of 'creating
an index and using that index to search for and retrieve data'" is an
exemplary activity of "organizing and accessing records through the creation
of an index-searchable database, includ[ing] longstanding conduct that
existed well before the advent of computer and the Internet." Intellectual
Ventures I LLC v. Erie Indemnity Co., 850 F.3d at 1327. The Federal Circuit
in Erie held "the claimed creation of an index used to search and retrieve
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information stored in a database is [] abstract." Id. The Erie court stated the
claims were directed to an abstract concept because "the heart of the claimed
invention lies in creating and using an index to search for and retrieve data."
Id. at 1328. Thus, the Erie court determined indexing and searching are
abstract ideas.
Moreover, we are not persuaded the claims are any less abstract
because they "incorporate specific features of rules as claim limitations that
limit the claims to a specific process for indexing ( or searching) documents,
and therefore do not preempt approaches that use rules of a different
structure or different techniques." App. Br. 18. We instead agree with the
Examiner that the idea is no less abstract because it "broadly encompasses
network communications depicting the connections between devices." Ans.
6-7. "An abstract idea does not become nonabstract by limiting the
invention to a particular field of use or technological environment, such as
the Internet." Erie, 850 F.3d at 1330 (quoting Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2016)).
Similarly, Appellants' preemption argument is unpersuasive. App.
Br. 18. Although preemption "'might tend to impede innovation more than
it would tend to promote it,' thereby thwarting the primary object of the
patent laws" (Alice Corp., 134 S. Ct. at 2354 (quoting Mayo, 566 U.S. at
71) ), "the absence of complete preemption does not demonstrate patent
eligibility" (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)). See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
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Thus, we agree with the Examiner that independent claim 1 together
with independent claims 10, 19, 28, 37, and 46, which are not argued
separately with particularity, are directed to an abstract idea in accordance
with step one of the Alice framework. See Non-Final Act. 3--4.
Step Two
Appellants argue that "[ e ]ven if the Examiner were correct in
asserting that claims 1, 10, 19, 28, 37, and 46 are directed to 'indexing data,'
... the claims would recite significantly more than that idea." App. Br. 18.
Appellants argue the claimed combination of elements provide the benefits
of enabling a user to select amounts of hardware servers on which to index
or search batches of documents. According to Appellants, the
elements of the claims, in combination, are arranged in a non-
conventional and non-generic manner because (1) the isolated
areas are created on hardware servers to accommodate the
selected amounts of hardware servers, and (2) the batches of
documents are effectively and efficiently indexed ( or searched)
on the respective isolated areas to accommodate for the
respective amounts of hardware servers on the respective isolated
areas, a functionality that is not contemplated in the prior art.
App. Br. 19-20.
We are not persuaded of error. Other than broadly directing attention
to the language of the claims (App. Br. 18-19), Appellants do not identify an
inventive concept that transforms the claims into patent eligible subject
matter. For example, Appellants' argument that the creation of isolated
areas on the hardware servers somehow accommodates the selected amounts
of hardware servers fails to explain why the creation of the isolated areas is a
technological improvement. Instead, under a broad but reasonable
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interpretation and in the absence of a narrowing definition, the argued
isolated areas encompass conventional server or computer storage. See, e.g.,
paragraph 20 of the Specification disclosing a server and associated storage:
"One web server 106 may interact with a large number of client devices 102.
Accordingly, each server 106 is typically a high end computer with a large
storage capacity, one or more fast microprocessors, and one or more high
speed network connections." That is, the isolated areas may have been
understood as a workspace for performing indexing and/ or searching and
thereby correspond to pen and paper augmenting what would otherwise be
purely mental processing.
Moreover, the argued enhanced effectiveness and efficiency of
indexing and searching has not been shown to be the result of a
technological improvement. "[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter." Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012)). That is, relying on a "processor" to "perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible."
OIP Techs., 788 F.3d at 1363.
We are also unpersuaded by Appellants' argument the claimed
functionality is not contemplated in the prior art. App. Br. 20. Although
novelty may be a factor to be considered when determining "whether the
claims contain an 'inventive concept' to 'transform' the claimed abstract
idea into patent-eligible subject matter" ( Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014)), a finding of novelty or nonobviousness
does not necessarily lead to the conclusion that subject matter is patentable
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eligible. "Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Here, Appellants have not
identified any novel features that transform the abstract idea into patent-
eligible subject matter.
Thus, we agree with the Examiner the claims do not recite
significantly more than the abstract idea, pursuant to step two of the Alice
framework. See Non-Final Act. 4--5. Therefore, we sustain the rejection of
claims 1-8, 10-17, 19-26, 28-35, 37--44, and 46-53 under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
B. 35U.S.C.§103
Appellants argue that York fails to disclose "indexing ( or
searching) the plurality ofN batches using respective app domains on a first
amount of hardware servers ... after creating a second isolated area."
App. Br. 21. Appellants further argue York also fails to disclose "that
indexing ( or searching) the plurality of N batches using respective additional
app domains on the hardware servers of the second amount of hardware
servers is performed while indexing ( or searching) the plurality of N
batches using separate app domains on the first amount of hardware
servers." Id. According to Appellants "York is silent on a temporal
consideration between indexing ( or searching) documents using distinct app
domains created on hardware components." Id. The Examiner responds,
directing attention to and quoting portions of York alleged to teach or
suggest the disputed limitations. Ans. 7-16. Appellants reply, arguing the
Examiner's mapping of the disputed second isolated area to York's social
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network graphs is deficient because "the social network graph of York is
neither an isolated area on hardware servers nor created using app domains
on respective hardware servers." Reply Br. 5. In connection with the
requirement for concurrent indexing or searching on both the first and
second amount of hardware servers, Appellants argue "York does not
disclose that both the indexing engine 120 and expanded social network
database 121 are concurrently used to index batches of documents." Reply
Br. 6.
We agree with Appellants. We are unable to ascertain from the
cited portions of York any disclosure of the recited temporal relationships
required by the disputed limitations and the Examiner has failed to explain
where or how those limitations are disclosed. At most we observe York
discloses "[p ]rocessing by indexing engine 120 and expanded social network
database 121 typically proceeds in parallel for each input content object."
Ans. 9, citing York ,r 88. However it is not clear how the disclosed parallel
processing of each input content object teaches or suggests the disputed
temporal relationships with respect to indexing ( or searching) after creation
of the second isolated area or indexing ( or searching) performed on the
second amount of hardware servers while indexing ( or searching) on the first
amount of hardware servers, and we decline to speculate.
We note, in an ex parte appeal, "[t]he Board's primary role is to
review the adverse decision as presented by the Examiner, and not to
conduct its own separate examination of the claims." MPEP § 1213.02.
Although the Board has discretion to enter a new ground of rejection (see 37
C.F.R. § 4I.50(b)), no inference should be drawn when that discretion is not
exercised. Because we are a board of review, and not a place of initial
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examination, we will not engage in the de nova examination that would be
required to supplement the Examiner's findings in connection with the
disputed temporal relationships. Therefore, we are constrained not to sustain
the rejection of dependent claims 1, 10, 19, 28, 37, and 46 under 35 U.S.C.
§ 103 together with the rejections of claims 2-8, 11-17, 20-26, 29-35, 38-
44, and 47-53 depending therefrom.
DECISION
The Examiner's decision rejecting 1-8, 10-17, 19-26, 28-35, 37--44,
and 46-53 under 35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 1-8, 10-17, 19-26, 28-35,
37--44, and 46-53 under 35 U.S.C. § 103(a) is reversed.
The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. 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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