Ex Parte Wang et al

Patent Trial and Appeal Board

Jul 27, 2017

13282632 (P.T.A.B. Jul. 27, 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.
13/282,632 10/27/2011 Yin Wang 82748985 4752
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHOY, PAN G
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIN WANG, AHMED M. NAZEEM, and
RAM SWAMINATHAN
Appeal 2015-003167
Application 13/282,6321
Technology Center 3600
Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Hewlett-Packard Development Company, LP, as the
real party in interest. Appeal Br. 2.
Appeal 2015-003167
Application 13/282,632
THE INVENTION
Appellants claim a system for providing goods and services utilizing
the Petri Net Synthesis Algorithms. See Spec. 2—3,11.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A system for providing goods or services utilizing Petri net
synthesis algorithms, the system comprising:
a processor that is adapted to execute stored instructions;
and
a memory device that stores instructions, the memory
device comprising
processor-executable code, that when executed by
the processor, is adapted to:
select component services;
compute an automaton from the component
services;
generate a Petri net from the automaton
using a theory of regions;
and
execute the Petri net to optimize a provision
of goods or services.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kikuchi US 2011/0004885 A1 Jan. 6, 2011
Lectures on Petri Nets I: Basic Models (Wolfgang Reisig & Grzegorz
Rozenberg, eds., 1998) (hereinafter “Reisig”).
The following rejections are before us for review.
Claims 1—20 are rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
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Claims 1, 8, and 15 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.^
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kikuchi and Reisig.
FINDINGS OF FACT
1. The Specification describes an automaton mathematically as:
Formally, in an automaton (S, X, A, so), a set of states R c
S is a region if and only if, for any pair of equally labeled
transitions A (s, a) = s', A(t, a) = f, the following holds: if s G R
and s' ^ R then t G R and t' £ R, and if s € R and s' G R then t €
R and t' G R. If an event a "leaves" region R, R is a pre-region
of a. If a "enters" R, R is a post-region of a. The set of all pre­
regions of a is denoted as °a. The set of all post-regions is
denoted as a°. Given a set R of regions for automaton (S, X, A,
So), an unlabeled Petri net (P, Tl, A, M0) may be constructed by
first letting P = R and Tl = X. In other words, add one place per
region and one transition per event label. Then (p, a) G A if and
only if the region of p is a pre-region of a, and (a, p) G A if and
only if the region of p is a post-region of a. A place has one
initial token in M0 if and only if its region contains the initial
state So.
A set R of set regions can map to an elementary Petri net
whose reachability graph is isomorphic to (S, X, A, so) if and
only if the following two conditions hold:
Vs, t G S, 3R G R such that s 6 R, t € R or s ^ R, t G R (1)
Vs G S, a G X, A (s, a) undefined—>3R G R, R G°a, S£ R (2)
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Application 13/282,632
Equation (1) is a state separation condition, which ensures
that different states in the automaton map to different markings
in the Petri net. ...
Equation (2) is an event separation condition, which ensures
that an event a not defined at a state s will be prohibited by
some place in the marking that corresponds to s.
Spec. 1140-44.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1—20 under 35 U.S.C. § 101.
Exemplary claim 12 is a method claim having steps, viz.
select component services;
compute an automaton from the component services;
generate a Petri net from the automaton using a theory of regions;
and
execute the Petri net to optimize a provision of goods or services.
(Emphasis added).
The Supreme Court
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. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
2 Independent claim 1 is exemplary of the subject matter found in each of the
remaining independent claims before us, namely, claims 8 and 15 all of
which contain some form of the pertinent limitations recited in claim 1.
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“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a 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.”
Alice Corp. Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is for providing goods or
services utilizing Petri net synthesis algorithms. The Specification also
describes that “[t]he automaton includes operations as transitions and
captures the life cycle of the variable.” Specification 2,11. The
Specification describes an automaton mathematically stating,
Formally, in an automaton (S, X, A, so), a set of states R c S is a
region if and only if, for any pair of equally labeled transitions
A (s, a) = s', A(t, a) = f, the following holds: if s £ R and s' € R
then t G R and t' G R, and if s G R and s' G R then t $ R and t' G
R. If an event a "leaves" region R, R is a pre-region of a. If a
"enters" R, R is a post-region of a. The set of all pre-regions of
a is denoted as °a. The set of all post-regions is denoted as a°.
Given a set R of regions for automaton (S, H, A, so), an
unlabeled Petri net (P, fl, A, M0) may be constructed by first
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letting P = R and II = X. In other words, add one place per
region and one transition per event label. Then (p, a) £ A if and
only if the region of p is a pre-region of a, and (a, p) £ A if and
only if the region of p is a post-region of a. A place has one
initial token in M0 if and only if its region contains the initial
state So.
A set R of set regions can map to an elementary Petri net
whose reachability graph is isomorphic to (S, F, A, so) if and
only if the following two conditions hold:
Vs, t G S, 3R G R such that s G R, t £ R or s £ R, t G R (1)
Vs £ S, a £ F, A (s, a) undefined—>3R G R, R G°a, sg R (2)
Equation (1) is a state separation condition, which ensures
that different states in the automaton map to different markings
in the Petri net. ...
Equation (2) is an event separation condition, which ensures
that an event a not defined at a state s will be prohibited by
some place in the marking that corresponds to s.
(FF. 1).
The steps in claim 1 result in executing a Petri net to optimize a provision of
goods or services. Thus, all this evidence shows that claim 1 is directed to
algorithms to optimize a provision of goods or services.
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972) in particular, that the claims at issue here are directed to
an abstract idea. Like the algorithm in Gottschalk, to optimize a provision of
goods or services, is a mathematical algorithm that preempts all
implementations and uses. “A procedure for solving a given type of
mathematical problem is known as an ‘algorithm.’” Id. at 65. Here, the
claims at issue are a mere solution to a mathematical problem. Furthermore,
the claims being directed to a solution for workflows “used to organize,
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orchestrate, and provide services in a service composition to achieve various
business objectives” (Specification 1,11), are thus directed to a
fundamental economic practice of workflow management. Thus, optimizing
a provision of goods or services derived from the claimed mathematical
formula is an “abstract idea” beyond the scope of § 101. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of performing a mathematical algorithm in Gottschalk
and the concept of performing a mathematical algorithm to optimize a
provision of goods or services at issue here. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2357. Notwithstanding, that claims do not preempt
all forms of the abstraction or may be limited to the abstract idea in, for
example, an interoperable services setting, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—
1361 (Fed. Cir. 2015). Perhaps more to the point, claim 1 does no more than
calculate variables for plural models to offer advice as to how to_optimize a
provision of goods or services. Mathematical models used to effect
optimization are the epitome of abstraction. See Gottschalk, 409 U.S. at 65.
The dependent claims merely describe further characteristics of the
variables used to calculate the claimed seasonal factor uplift coefficient,
which are likewise abstractions given that each only places a mental marker
to a given value.
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The introduction of a computer and/or storage media into the claims
does not alter the analysis at Mayo step two:
the 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 it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute, using an equation, a result from a
database amounts to electronic data query, retrieval, and calculation— the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
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industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ claims add nothing that is not already present when the steps are
considered separately. Viewed as a whole, Appellants’ claims simply recite
the concept of determining seasonal demand for a product as performed by a
generic computer. The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea of
calculating model variables, using a generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original) (quoting
Mayo, 132 S. Ct., at 1294).
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35 U.S.C. § 112 SECOND PARAGRAPH REJECTION
We will not affirm the rejection of claims 1, 8 and 15 under 35 U.S.C.
§112 second paragraph.
The Examiner finds that although the
specification on page 2, lines 30-31 recites “The automaton
includes operations as transitions and captures the life cycle of
the variable.” [sic] it merely describes the component of the
automaton, rather than its actual computation; however, the
specification does not clearly define the boundary of such
limitation.
Final Act. 8.
We disagree with the Examiner because we find instead that the
description of the component parts of the term, “automaton”, i.e., operations
as transitions and captures the life cycle of the variable (Specification 2,
11), is sufficient to set the metes and bounds of the claim. As such, we find
that the Examiner’s concerns are a matter of claim breadth, not
indefmiteness. “Breadth is not indefmiteness.” In re Gardner, 427 F.2d
786, 788 (CCPA 1970).
35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 8 and 15 require in one form or
another, “select component services; compute an automaton from the
component services.” Appeal Br., Claims App’x.
Appellants argue,
The Examiner has taken an overly broad definition of the term
“automaton.” The Appellants respectfully submit that an
automaton includes operations as transitions and captures the
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life cycle of a variable. See ‘430 Publication, para. [0014], As
discussed above, the Appellants also submit that when
component services are modeled by automata, a single
automaton of the composite services is found by taking the
parallel product of automata that represent the component
services. See id., para. [0037]. Here, the Examiner ignores that
the “automaton” is computed “from the component services.”
Kikuchi does not disclose any sort of automaton. In fact, the
term “automaton” does not appear in any form in Kikuchi.
Appeal Br. 13.
The Examiner however found, that Kikuchi discloses “compute an
automaton from the component services (see 110, 15 and 87-88).” Final
Act. 9.
We begin by construing the scope of the claims and in particular the
meaning of the term “automaton.” We turn to the Specification for
guidance. The Specification describes that “[t]he automaton includes
operations as transitions and captures the life cycle of the variable.”
Specification 2,11. Thus, based on Appellants’ Specification, we construe
each automaton to have transitions, which correspond to operations, which
capture the life cycle of a variable.
Our review of Kikuchi at paragraphs 10, 15 and 87—88 reveals that at
paragraph 15 Kikuchi discloses “a control object model for executing the
emulation result on dynamic characteristics of the control object.” While the
control object model in Kikuchi does emulate a result on the dynamic
characteristics of the control object/variable, it would similarly execute
operations as transitions. But, the similarity stops here. It is not apparent
nor does the record show how the control model in Kikuchi captures the life
cycle of the variable, in this case the associated control object, because it is
unclear if the dynamic characteristics are instantaneous, or are tied to the life
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cycle of the variable as required by the claims. Thus, we will not sustain the
obvious rejection of independent claims 1, 8 and 15.
Because claims 2—7, 9—14, and 16—20 depend from one of claims 1, 8
and 15 and since we cannot sustain the rejection of independent claims 1, 8
and 15, the rejection of claims 2—7, 9-14, and 16—20 likewise cannot be
sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—20 under
35U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1,18, and 15
under 35 U.S.C. § 112(b).
We conclude the Examiner did err in rejecting claims 1—20 under 35
U.S.C. 103(a).
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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