Fernando Salazar

Patent Trials and Appeals Board

Jun 22, 2020

2018008881 (P.T.A.B. Jun. 22, 2020)

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.
11/612,988 12/19/2006 Fernando Salazar CAM920060132US1 7022
106324 7590 06/22/2020
IBM Corp. - Fishkill Drafting Center
SVL
650 Harry Road, Almaden Research Center
C4TA/J2B
San Jose, CA 95120
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FERNANDO SALAZAR
____________

Appeal 2018-008881
Application 11/612,988
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–4, 7–9, 12–15, and 18–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed April 9, 2018) and Reply Brief (“Reply Br.,” filed Sept. 13, 2018), and
the Examiner’s Answer (“Ans.,” mailed July 13, 2018) and Final Office
Action (“Final Act.,” mailed Oct. 12, 2017). Appellant identifies
International Business Machines Corporation as the real party in interest.
Appeal Br. 2.
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CLAIMED INVENTION
Appellant describes that the claimed invention “relates to the field of
component based distributed computing and more particularly to component
based distributed computing in a service oriented architecture (SOA)
environment.” Spec. ¶ 1.
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for service endpoint visualization and dynamic
dependency management, the method comprising:
[(a)] receiving a query for a service type from a
communicatively coupled querying client;
[(b)] consulting a registry through a registry interface
utilizing the service type in order to identify in the registry a
corresponding service endpoint address for the service type;
[(c)] issuing by a virtualization server executing in
memory of a computer and binding service consumers to virtual
endpoints, a ticket to the querying client instead of returning to
the querying client the located corresponding service endpoint
address;
[(d)] subsequently receiving in the virtualization server,
the ticket issued to the querying client and in response, storing a
callback address provided with the ticket in association with the
querying client and providing to the querying client the
corresponding service endpoint address for use by the querying
client to bind in the querying client the service type to a service
accessible at the corresponding service endpoint address; and,
[(e)] upon detecting a change for the corresponding
service endpoint address, using the callback address to notify the
querying client of the change, the querying client in response re-
redeeming the ticket at a later time to receive a different service
endpoint address for the service type.
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REJECTIONS
Claims 1–4, 7–9, 12–15, and 18–20 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1–4, 7–9, 12–15, and 18–20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ijidakinro (US 2008/0056233 A1, pub. Mar. 6,
2008) and Franco (US 2004/0044585 A1, pub. Mar. 4, 2004).
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012), “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., 573 U.S. at 217. The first step
in that analysis is to “determine whether the claims at issue are directed to
one of those patent-ineligible concepts.” Id. If the claims are not directed to
a patent-ineligible concept, e.g., an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
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at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the independent claims 1 and 12
are directed to the abstract idea of collecting information
regarding a querying client, a service, service endpoints, and a
ticket, organizing the collected information by issuing tickets for
the service to the querying client, storing a portion of the
collected information, associating tickets and the querying client
with the service endpoint address, and then analyzing a portion
of the collected information to notify the querying client so that
a the [sic] querying client may redeem the ticket and associate
with another service endpoint address.
Final Act. 12. The Examiner concluded that this concept is similar to other
concepts that the courts have found abstract. Id. at 13 (citing Elec. Power
Grp. LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016); Cyberfone Sys.,
LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014)). And
the Examiner determined that the additional elements in the claims do not
amount to significantly more than the abstract idea because they
provide no more than mere instructions to implement the idea
on generic computer components and simply append the
abstract idea to a generic arrangement of generic computer
structure that perform generic computer functions that are well-
understood, routine, and conventional activities previously
known in the field.
Id. The Examiner determined that the additional elements recited in
dependent claims, considered alone and as an ordered combination, do not
amount to significantly more than the recited abstract idea. Id. at 13–14.
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After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea; and (2) clarifying that a claim is not
‘directed to’ a judicial exception if the judicial exception is integrated into a
practical application of that exception.” Id. at 50. The Revised Guidance,
by its terms, “applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019.” Id.; see also the
USPTO’s “October 2019 Update: Subject Matter Eligibility,” available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (clarifying the Revised Guidance in response to
comments solicited from the public) (hereinafter “October 2019 Update”).
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Revised Guidance, 84 Fed.
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Reg. at 52. If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, “that integrate the [judicial]
exception into a practical application,” i.e., that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Here, the Specification is entitled “SERVICE ENDPOINT
VISUALIZATION AND DYNAMIC DEPENDENCY MANAGEMENT.”
The Background section describes an open service oriented architecture
(SOA) as “a system where all exposed business and technical functions are
in the form of reusable services.” Spec. ¶ 2. These services can be accessed
by a variety of clients and the services can engage with each other to
exchange data or coordinate an activity among two or more services. Id.
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An exemplary commerce application of an SOA includes services
such as catalog management, shopping cart management, credit card
transaction process, and sales tax computation. Id. ¶ 3. Because access to a
service is based on standards and interfaces, rather than proprietary
dependencies, services can be added or changed without displacing other
services. Id. SOAs are based on loose coupling between service providers
and service consumers, preferably using a late binding approach, wherein a
needed service provider endpoint address is resolved at runtime with the aid
of a registry, such as the Universal Description, Discovery and Integration
(UDDI) registry. Id. ¶ 4.
Service virtualization can be realized with an SOA. Id. In service
virtualization, a service consumer binds to a virtual endpoint, and the virtual
endpoint resolves a connection to a desired, concrete endpoint. Id. Because
services are defined logically, service virtualization allows clients to bind to
a single, unchanging entity, while the service implementation can be
redirected or changed at any time. Id. However, each link between
endpoints represents a dependency that potentially requires management. Id.
¶ 5. With a large number of providers and consumers, links quickly grow to
an overwhelming number, compromising the overall system. Id.
To solve this problem, the present invention describes providing time
limited binding to virtualized endpoints for a service by issuing and
redeeming a ticket. See Spec. ¶¶ 6, 7, 15. Specifically, instead of binding a
client to a virtualized endpoint for a service in response to a service query
from the client, a virtualization server issues a ticket for the service to a
client. Id. ¶¶ 7, 18, 22. The client stores the ticket in memory and when the
client requires binding to the service, the client forwards a combined
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ticket/callback (i.e., the stored ticket and a callback address for the querying
client) to the virtualization server. Id. ¶ 18. Then, the virtualization server
stores the callback address in association with the client, and returns a valid
endpoint address to the client. Id. ¶ 19. The client, in turn, binds to the
service using the endpoint address. Id. When a change to the binding is
required, the virtualization server forwards a change event to the client, the
client reissues the combined ticket/callback, and the client receives a new
endpoint address for a different service to which to bind. Id.
Consistent with this disclosure, claim 1 recites a method for service
endpoint visualization and dynamic dependency management. The steps of
the method include: (1) “receiving a query for a service type from a
communicatively coupled querying client” (step (a)); (2) “consulting a
registry through a registry interface utilizing the service type in order to
identify in the registry a corresponding service endpoint address for the
service type” (step (b)); (3) “issuing . . . and binding service consumers to
virtual endpoints, a ticket to the querying client instead of returning to the
querying client the located corresponding service endpoint address”
(step (c)); (4)
subsequently receiving . . . , the ticket issued to the
querying client and in response, storing a callback address
provided with the ticket in association with the querying client
and providing to the querying client the corresponding service
endpoint address for use by the querying client to bind in the
querying client the service type to a service accessible at the
corresponding service endpoint address; and
(step (d)); and (5) “upon detecting a change for the corresponding service
endpoint address, using the callback address to notify the querying client of
the change, the querying client in response re-redeeming the ticket at a later
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time to receive a different service endpoint address for the service type”
(step (e)). Independent claim 12 recites similar subject matter.
As described above, the Examiner found these limitations similar to
the concept of “collecting information, analyzing it, and displaying certain
results of the collection and analysis,” which the Federal Circuit held to be
abstract. Elec. Power Grp., 830 F.3d at 1353. Viewed through the lens of
the Revised Guidance, we understand the Examiner’s characterization of the
abstract idea to be a mental process, i.e., “concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).” Revised
Guidance, 84 Fed. Reg. at 52 (footnotes omitted); see also October 2019
Update 7 (identifying exemplary mental processes as including the concept
of the claims at issue in Electric Power Group).
As an initial matter, we disagree that steps (a) through (e), as recited
in claim 1, and similarly recited in claim 12, are analogous to data analysis
steps that can practically be performed in the human mind, such as those at
issue in Electric Power Group. See October 2019 Update 7 (explaining
claim limitations do not recite a mental process when the limitations cannot
practically be performed in the human mind).
However, even if claims 1 and 12 recite an abstract idea, the Examiner
has not addressed whether the claimed method entails a technological
improvement in existing techniques for service endpoint visualization and
dynamic dependency management. The Specification details, as described
above, the shortcomings associated with then existing service endpoint
visualization, including difficulty in managing a large number of dynamic
dependencies. Spec. ¶ 5. The claimed invention addresses these
shortcomings by providing a method that includes issuing by a virtualization
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server a ticket to the querying client instead of returning a service endpoint
address; subsequently receiving in the virtualization server, the ticket;
storing a callback address provided with the ticket in association with the
querying client; and providing to the querying client the corresponding
service endpoint address, as well as using the callback address to notify the
querying client of a detected change for the corresponding service endpoint
address, and the querying client re-redeeming the ticket at a later time to
receive a different service endpoint address for the service type. Rather
than merely reciting a functional result of calling a service, the claims
therefore recite a machine controlled implementation for doing so.
Accordingly, even if the claims recite an abstract idea, the Examiner has not
established that claims fail to integrate the asserted abstract idea into a
practical application. Therefore, we do not sustain the Examiner’s rejection
of independent claims 1 and 12 under 35 U.S.C. § 101. For the same
reasons, we also do not sustain the Examiner’s rejection of dependent claims
2–4, 7–11, 13–15, and 18–20.
Obviousness
We are persuaded that the Examiner erred in rejecting claims 1 and 12
under 35 U.S.C. § 103, at least because Ijidakinro does not teach or suggest
subsequently receiving in the virtualization server, the
ticket issued to the querying client and in response, storing a
callback address provided with the ticket in association with the
querying client and providing to the querying client the
corresponding service endpoint address for use by the querying
client to bind in the querying client the service type to a service
accessible at the corresponding service endpoint address[,]
as recited in limitation (d) of claim 1. Appeal Br. 13–17.
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Ijidakinro relates to call-in customer support service. See
Ijidakinro ¶ 1. In particular, Ijidakinro describes routing customer support
calls among customer support agents who are remotely located and
geographically distributed via the Internet. Id. ¶ 15. Ijidakinro’s method for
customer support incident routing includes a user contacting
communications server 104 via communication network 106. Id. ¶ 17,
Fig. 1. Communication network 106 is typically a telephone network. Id.
Communications server 104 forwards data to incident management and
routing service 110 via data network 112. Id. ¶ 18. Incident management
and routing service 110 routes the call to integrated voice response (IVR)
system 116. Id. ¶ 19. IVR system 116 gathers data from the user, such as
the user’s call-back number in case the call is inadvertently dropped, that can
be used to generate a customer support incident ticket. Id. ¶ 19. Ticket
creation module 316 receives data gathered from the user via IVR system
116 and generates a customer support incident ticket describing the nature of
the customer support call. Id. ¶ 27. The ticket is stored in ticketing store
318, which maintains data associated with customer support calls.
Id. ¶¶ 27–28, 46.
Multiple customer support agents 118, located anywhere in the world,
log into incident management and routing service 110 via the Internet to
provide customer support. Id. ¶ 20. A customer support ticket is assigned
based on an agent’s availability, language, and area of expertise. Id. Once
the customer support ticket is assigned to a customer support agent, the
customer support call is routed between the user communication device and
the customer support agent’s PC. Id. ¶ 21. In one embodiment, the
customer opts to have a customer support agent call back, rather than wait
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on hold. Id. ¶¶ 45, 69. In that implementation, the call is disconnected after
data is gathered from the customer. Id. ¶ 45. And the user is called when a
customer support agent is assigned to the customer support ticket. Id. ¶ 69.
In rejecting independent claim 1, the Examiner “interprets the recited
‘callback address’ to include the ‘call-back number’ that is obtained from the
customer by the IVR 116 in case the call is disconnected and is stored in the
ticketing data store 318 along with the ticket, as disclosed in Ijidakinro
([0019], [0027]-[0028]).” Ans. 9; see also Final Act. 17 (citing
Ijidakinro ¶¶ 19, 28). The Examiner supports this interpretation by referring
to a dictionary definition from Merriam-Webster for the term “address” as “a
place where a person or organization may be communicated with.” Ans. 9–
10 (citing www.merriam-webster.com/address).
Yet, Appellant’s Specification describes the invention in the context
of service virtualization in a service oriented architecture environment. See,
e.g., Spec. ¶¶ 1–4. For example, the Specification provides that “[i]n
virtualization, service customers bind to virtual endpoints; then some logic
or mechanism in the virtual endpoint ultimately resolves a connection to a
desired concrete endpoint.” Id. ¶ 4. The invention provides a method,
system, and computer program product “for service endpoint virtualization
and dynamic dependency management.” Id. ¶ 6. Instead of providing a
service endpoint to a querying client, the invention issues a ticket for an
identified service and the querying client redeems the ticket, which the
querying client subsequently redeems for a service endpoint for the querying
client. Id. ¶ 7. Redeeming the ticket from the querying client includes
receiving the ticket from the querying client, locating a service endpoint to
an instance of the identified service, extracting a callback for the querying
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client from the ticket, storing the extracted callback for later retrieval, and
returning the service endpoint to the querying client. Id. ¶ 8. When a
change in the instance of the identified service is detected, the querying
client is notified through the callback address that a new ticket redemption
for a new service endpoint for a different identified service is required. Id.
Therefore, we agree with Appellant (Appeal Br. 15–17) that one of
ordinary skill in the art would understand in light of the Specification that
the claimed “callback address” would not include a telephone number
gathered by IVR from a client, as disclosed by Ijidakinro. Accordingly, we
do not sustain the rejection of independent claims 1 and 12 and their
dependent claims under 35 U.S.C. § 103 as unpatentable over Ijidakinro and
Franco.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 7–9,
12–15, 18–
20
101 Eligibility 1–4, 7–9,
12–15, 18–
20
1–4, 7–9,
12–15, 18–
20
103 Ijidakinro,
Franco
1–4, 7–9,
12–15, 18–
20
Overall
Outcome
1–4, 7–9,
12–15, 18–
20
REVERSED