13870165 - (R) (P.T.A.B. Aug. 22, 2019)

Hyun Joo. Kim et al.

Patent Trials and Appeals BoardAug 22, 2019

13870165 - (R) (P.T.A.B. Aug. 22, 2019)

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. 13/870,165 04/25/2013 Hyun Joo Kim 20120788US01- CNDT2981US01 1303 144578 7590 08/21/2019 FAY SHARPE LLP / CONDUENT 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER LI, SIDNEY ART UNIT PAPER NUMBER 2136 NOTIFICATION DATE DELIVERY MODE 08/21/2019 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): Conduent.PatentDocketing@conduent.com docketing@faysharpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HYUN JOO KIM and GUEYOUNG JUNG ____________________ Appeal 2018-0027621 Application 13/870,1652 Technology Center 2100 ____________________ Before MICHAEL W. KIM, KALYAN K. DESHPANDE, and RAMA G. ELLURU, Administrative Patent Judges. ELLURU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE The Board issued a Decision on Appeal on November 26, 2018. On January 7, 2019, the 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”) 1 We reference the Specification (“Spec.,” filed Apr. 25, 2013), Request for Rehearing (“Req.,” filed Jan. 25, 2019), Appeal Brief (“App. Br.,” filed Aug. 29, 2017), and Reply Brief (“Reply Br.,” filed Jan. 16, 2018), as well as the Examiner’s Answer (“Ans.,” mailed Nov. 15, 2017) and Final Office Action (“Final Act.,” mailed Dec. 22, 2016). 2 According to the Appeal Brief, the real party in interest is CONDUENT BUSINESS SERVICES, LLC. Appeal Br. 1. Appeal 2018-002762 Application 13/870,165 2 was issued. 84 Fed. Reg. 50 (Jan. 7, 2019). On January 25, 2019, Appellants filed a Request for Rehearing (“Request” or “Req. Reh’g”). In the Request, Appellants argue that the claims at issue are eligible under the Guidance. “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. 41.52. The Board could not have misapprehended or overlooked that which did not exist at the time of its Decision. At the same time, Appellants did not have the opportunity to present arguments about the Guidance for the same reason. Both the previous and current Guidance are based on decisions by the Supreme Court and the Federal Circuit. 84 Fed. Reg. at 51 (“The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. 101 in view of decisions by the Supreme Court and the Federal Circuit. . . . Rejections will continue to be based upon the substantive law, and it is those rejections that are appealable to the Patent Trial and Appeal Board (PTAB) and the courts.”). Accordingly, we consider the rejections on appeal, Appellants’ arguments, and the Board’s Decision through the lens of the Guidance. And when the record is considered from that perspective, we are unpersuaded that the rejection of the pending claims, and our previous affirmance of that rejection, were erroneous. For that reason, we DENY Appellants’ Request. DISCUSSION Claims 1–8, 10–19, and 21 rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter Appellants argue that, under the Guidance, the claims are directed to patent eligible subject matter. Req. Reh’g 3. Specifically, Appellants argues that under the Guidance, “independent claims 1, 11, and 18 integrate any alleged abstract idea Appeal 2018-002762 Application 13/870,165 3 into a practical application of that alleged abstract idea.” Id. at 3. For the reasons stated below, we determine that the claims are directed to mental processes, do not integrate the mental processes into a practical application, and include only well- understood, routine, and conventional elements. For those reasons, we deny the Request. Patents are available for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Excluded from eligibility are laws of nature, natural phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). To distinguish those claims, which are eligible, from those, which are not eligible, the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014), articulated a two-step framework. At the first step, “we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). At the second step, “we 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. (quoting in part Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). Overall, Appellants argue that the claims at issue are not directed to an abstract idea because the claims improve “the storage (i.e., memory or database) of a computer” by ensuring that “data [is] stored in the ‘correct location.’” Req. 4. Appellants explain that the claims, as represented by claim 1, “[are] directed to (among other features): identifying a storage location associated with the one of the set of hierarchical storage classes in which the received data was classified; and Appeal 2018-002762 Application 13/870,165 4 storing the received data in the identified storage location.” Id. Because Appellants argue claim 1 as representative of the other claims in the application, see Req. 3–5, we need only address claim 1. If we determine that Claim 1 is ineligible, the remaining claims also will be ineligible for the same reasons. Guidance Step 2A, Prong 1 We first determine whether the claim is directed to a patent in-eligible concept. The Guidance divides this step into two prongs. At Prong 1, we decide whether the claim falls into one of three enumerated categories: (i) mathematical concepts—i.e., mathematical relationships, mathematical formulas or equations; (ii) methods of organizing human activity—i.e., fundamental economic principles or practices, commercial or legal interactions; or (iii) mental processes—concepts performed in the human mind. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (internal citations omitted). In our Decision, we asserted the following: Here, as the Examiner found, the claimed steps include “estimating a storing cost of data, estimating a processing cost of the data, determining [sic] processing type for the data, classifying the data, identifying a storage location, and storing the data.” Ans. 3. The Examiner further found that “[c]onceptually, the claim is not much different than a person, mentally or with pen and paper” calculating and deciding where to store the data. Id. So, unlike the patent at issue in Diehr, the current invention's use of the computer does nothing more than make “estimating a storing cost of data, estimating a processing cost of the data, determining [sic] processing type for the data, classifying the data, identifying a storage location, and storing the data.” And, while these multiple calculations “may be better suited for use with a computer technology,” (Reply Br. 6), we agree with the Examiner that one can nevertheless accomplish these calculations mentally or using pen and paper. See Ans. 3. Dec. 5. Even when reframed in the parlance and terminology of the Guidance, the substantive outcome is almost identical. Appeal 2018-002762 Application 13/870,165 5 Specifically, the preamble of claim 1 recites “[a] method for hierarchical autonomic data storage.” The body of claim 1 reads as follows: calculating at least one cost associated with received data; responsive to at least one calculated cost, determining a processing type associated with the received data; classifying the received data as one of a set of hierarchical storage classes in accordance with the determined processing type; identifying a storage location associated with the one of the set of hierarchical storage classes in which the received data was classified; and storing the received data in the identified storage location, wherein at least one of the calculating, classifying, identifying, and storing is performed with a computer processor. In essence, claim 1 recites the steps of: (1) calculating cost; (2) determining a processing type based on that cost; (3) classifying data; (4) identifying storage locations; and (5) storing data. These steps recite a method for storing data based on calculating storage costs associated with an identified storage location, in that they are all steps one would perform in implementing such a method. We find that, with the exception of a generic computer processor, nothing in the claim limitations, either individually or collectively, “foreclose them from being practically performed by a human, mentally, or with pen and paper.” See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). For example, “calculating at least one cost associated with received data” is no more than rendering an “evaluation, judgment, opinion” (84 Fed. Reg. at 52) that the received data has a particular cost. In another example, “classifying the received data as one of a set of hierarchical storage classes in accordance with the determined processing type” is no more than rendering an “evaluation, judgment, opinion” that the received data should be classified based upon predefined criteria. The same analysis is applicable to at least the “determining” and “identifying” steps. And finally, we determine that “storing data based on calculating storage Appeal 2018-002762 Application 13/870,165 6 costs associated with an identified storage location” itself is also a mental process. Thus, we determine that, under Step 2A, Prong 1 of the Guidance, Appellants’ claim 1 recites a mental process. We now turn to Step 2A Prong 2 of the Guidance to determine whether claim 1, nevertheless, integrates the mental process into a practical application. Guidance Step 2A, Prong 2 Having determined Appellants’ claims to recite a mental process, we review whether the recited mental process is integrated into a practical application, as per Prong 2 of the Guidance. As argued by the Appellants, such is the case where, for example, “[a]n additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field,” 84 Fed. Reg. 55 (citing DDR Holdings, 773 F.3d at 1258–59), or “an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” 84 Fed. Reg. 55 (citing Diehr, 450 U.S. at 184, 187). To facilitate our later discussion, we briefly summarize some case law relevant to this inquiry. In DDR Holdings, the Federal Circuit held patent eligible certain claims directed to “a system for generating web pages that allowed website visitors to ‘purchase and download the digital products of their choice,’ but still ‘retain[ed] the look and feel of [the host’s] site.” 773 F.3d at 1253, 1259 (emphasis and alterations in original). In so holding, the Federal Circuit determined that the problem specifically arose in the realm of computer networks—that before the invention, a visitor would be led away from the host website upon clicking a third party advertisement. Id. at 1257. The claimed invention solved this problem by Appeal 2018-002762 Application 13/870,165 7 instead “direct[ing] the visitor to an automatically-generated hybrid web page that combines visual ‘look and feel’ elements from the host website and product information from the third-party merchant’s website related to the clicked advertisement.” Id. The Federal Circuit reasoned that the claims were directed at a solution “necessarily rooted in computer technology” as the claims overcame “a problem specifically arising in the realm of computer networks.” Id. at 1257. In Finjan, Inc. v. Blue Coat Systems, Inc., the Federal Circuit held patent eligible claims directed to a method for generating a “Downloadable security profile that identifies suspicious code in [a] received Downloadable.” 879 F.3d 1299, 1304 (Fed. Cir. 2018). The Court noted that the claimed invention “produced [a] ‘behavior-based’ virus scan,” which differed from the traditional, code-matching virus scans. Id. The Court further noted that claim 1 “employ[ed] a new kind of file that enables a computer security system to do things it could not do before” and was, therefore, a “non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large.” Id. at 1305. In Intellectual Ventures I, the Federal Circuit held ineligible “methods for receiving, screening, and distributing e-mail.” 838 F.3d at 1316. The Federal Circuit reasoned that, “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.” Id. at 1318 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011)). Returning to the issue at hand, Appellants argue that representative claim 1 “is directed to a practical application of using a computer to determine a storage location for data based on a classification of the data.” Req. Reh’g 4. In support, Appellants asserts that the claim reflects an improvement to computer technology, Appeal 2018-002762 Application 13/870,165 8 and more specifically, computer memory storage because, under the claimed method, “storage location for data is determined before storing the data,” which “is more efficient.” Id. Appellants additionally provides that the data-storage and retrieval methods recited in claim 1 not only improve efficiency, but also increase accuracy. Id. We are not persuaded. As an initial matter, we note that we addressed already substantively identical arguments in our Decision as follows: Unlike the patent at issue in Enfish, we find the current invention is not directed to any specific thing that improves data storage technology, but is a general combination of calculations and determinations that one may or may not perform using a computer. We agree with the Examiner that the “multiple steps of estimating, determining, classifying, and identifying” can be performed by “any type of computer elements.” Ans. 7. Dec. 6. And again, even when reframed in the parlance and terminology of the Guidance, we remain unpersuaded that the claimed steps integrate the mental process into a practical application because they do not offer an improvement to computer technology. MPEP § 2106.05(a) (“IMPROVEMENTS TO THE FUNCTIONING OF A COMPUTER OR TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD”). Unlike the technologically created problem of retaining website traffic, like that found in DDR Holdings, as summarized above, we are not persuaded that determining where to store data, as claimed, is a problem rooted in computer technology. Specifically, the only claim limitation that is arguably not a mental process is “storing the received data in the identified storage location.” Neither the claim limitation, nor the surrounding claim language, recite any method of storage that would be specific to computer technology, let alone define a problem within it. And unlike the improved virus-scanning technology found Appeal 2018-002762 Application 13/870,165 9 eligible in Finjan, determining where to store data by calculating storage costs and assessing storage requirements is not a solution specific to computer technology. Instead, like the methods for filtering emails based on content, which the Federal Circuit found ineligible in Intellectual Ventures I, Appellants’ claims do nothing more than perform economic and space assessments, which a human is otherwise capable of performing, on a computer. We also are unpersuaded by Appellants’ argument that claim 1 offers a technological improvement to the functioning of a computer by making more efficient computer processing, storing, and retrieving data. Req. Reh’g 4. Increased efficiency is not, by itself, enough to render an invention eligible. See, e.g., Finjan, 879 F.3d at 1305 (citing Enfish, 822 F.3d at 1336) (“Indeed, the self- referential database found patent eligible in Enfish did more than allow computers to perform familiar tasks with greater speed and efficiency; it actually permitted users to launch and construct databases in a new way.”). For the reasons set forth above, we determine that Appellants’ claims are directed to patent-ineligible subject matter. We turn next to Step 2B of the Guidance. Guidance Step 2B Appellants do not proffer arguments pertinent to Step 2B of the Guidance. Nevertheless, in view of the procedural circumstances, and to provide Appellants with more complete reasoning under the framework of the Guidance, we exercise our discretion and continue the analysis on the merits. To that end, because Appellants’ claims, when considered both individually and as an ordered combination, fail to provide an inventive concept and only recite well-understood, routine, and conventional elements, we determine that Appellants’ claims lack an Appeal 2018-002762 Application 13/870,165 10 inventive concept sufficient to transform the abstract idea into a patent-eligible invention. At Step 2B, we assess whether Appellants’ claims, when directed to patent- ineligible subject matter, nevertheless, provide an inventive concept. Alice Corp., 573 U.S. at 217. At this step, we consider whether “the claim recites additional elements that render the claim patent eligible.” 84 Fed. Reg. at 55 (citing, e.g., Diehr, 450 U.S. at 187). We consider whether the claims “simply append[] well- understood, routine, conventional activities previously known to the industry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal citations omitted). “An inventive concept that transforms the abstract idea into a patent- eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). When considered individually, Appellants’ claims recite nothing more than well-understood, routine, and conventional elements. As discussed above, at Step 2A, we found that Appellants’ claim 1 recites: (1) calculating cost; (2) determining a processing type based on that cost; (3) classifying data; (4) identifying storage locations; and (5) storing data. We determined these steps, individually and in combination, recite the mental process of storing data based on calculating storage costs associated with an identified storage location. Apart from these steps, we determine that Appellants’ claim 1, when viewed in a light most favorable to Appellants, only further recites the additional element of “hierarchical storage classes.” We must, therefore, determine whether, individually, the “hierarchical storage classes” element was, at the time of Appellants’ invention, well-known, Appeal 2018-002762 Application 13/870,165 11 routine, and conventional. We determine it was well-known, routine, and conventional at the time of the invention. “[W]hether a claim element or combination of elements is well-understood, routine and conventional . . . is a question of fact.” Berkheimer, 881 F.3d at 1368. Appellants’ specification essentially explains that analytics platforms routinely integrate various storage classes. Spec. ¶ [0002]. These storage classes include conventional data storage classes such as “memory, database, Hadoop file system (HDFS), traditional disk of internal data center, and external cloud storages.” Spec. ¶ [0002]. Any purported novelty in the invention, as the specification explains, lies not in the hierarchy of storage classes, or even in integrating those classes into one system, but in determining the proper storage class based on characteristics of data. Spec. ¶ [0002]. Because we find that it was well understood to integrate many conventional storage classes into a single system, we determine that claim 1’s “hierarchical storage class” element was well-understood, routine, and conventional at the time of the invention. Furthermore, as an ordered combination, we find no inventive concept in the invention’s method of determining a proper storage location through routine calculations. In Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, the Federal Circuit held eligible claims directed “to the abstract idea of filtering content.” 827 F.3d at 1352. The Federal Circuit, on appeal from the district court, agreed that “filtering content is an abstract idea because it is a longstanding, well- known method of organizing human behavior.” Id. at 1348. But the Court disagreed that the invention failed to disclose an inventive concept. Id. at 1349. Instead, the Court reasoned that although the claim limitations, when considered individually, recited routine steps and generic or well-known computer components that “interact in well-known ways,” the claims nevertheless, when Appeal 2018-002762 Application 13/870,165 12 considered as an ordered combination, demonstrated an inventive concept through the “non-conventional and non-generic arrangement of [those] known, conventional pieces.” Id. at 1349–50. The same cannot be said for the current invention. As an ordered combination, the current invention simply applies mental processes to well-understood, routine, and conventional elements. Estimating storing and processing costs is accomplished by a cost calculator, which simply associates data with stored cost metrics “based upon a unit cost associated with storage.” Spec. ¶ [0029]. Classifying the received data is accomplished through identifying conventional types of data, such as “HDFS . . . if the processing type is MapReduce type of job, [or] database 108 . . . if the processing type is column- wise or range based row-wise operation.” Spec. ¶ 32. Identifying a storage location “in accordance with the type of data, the type of processing associated with the data, and the like” looks to conventional data metrics. Id. And storing data, in and of itself, is a well-understood, routine, and conventional computer function. See, e.g., In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (noting that “the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive” with general purpose computers). Together and in combination, Appellants’ claims fail to offer an arrangement of elements sufficient to demonstrate an inventive concept. In order to demonstrate an inventive concept, the claims must do more than simply implement a computer to perform steps that, when considered individually, are abstract. Bascom, 827 F.3d at 1349. Appellants’ claims do not. For the reasons set forth above, we determine that Appellants’ claims do not recite additional elements that render Appellants’ invention patent eligible. Appeal 2018-002762 Application 13/870,165 13 CONCLUSION Appellants’ claims 1–8, 10–19, and 21 are directed to mental processes, they do not offer a technological solution to a technical problem, and they include only well-understood, routine, and conventional elements. We therefore determine that, even under the Office’s new guidance, Appellants’ invention remains patent ineligible. Accordingly: Rehearing is DENIED.