International Business Machines Corporation

Patent Trials and Appeals Board

Sep 14, 2020

14709587 - (D) (P.T.A.B. Sep. 14, 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.
14/709,587 05/12/2015 Andrew J. Bernoth AU920140029US1 5493
11445 7590 09/14/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
09/14/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. BERNOTH, DANIEL J. MARTIN,
SANDEEP R. PATIL, PIYUSH SARWAL,
RIYAZAHAMAD M. SHIRAGUPPI, and
GANDHI SIVAKUMAR
Appeal 2019-002477
Application 14/709,587
Technology Center 2400

Before DANIEL J. GALLIGAN, JESSICA C. KAISER, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1, 8, and 15 are independent claims.2 Claim 1 is reproduced
below:
1. A method for monitoring a data packet in a distributed
computing environment, the method comprising the steps of:
receiving, by one or more computer processors, a request
to monitor a data packet to be transmitted from a first location to
a second location over a first network;
determining, by one or more computer processors, a
projected time for the transmission of the data packet from the
first location to the second location; and
responsive to determining the projected time, determining,
by one or more computer processors, whether the data packet
arrived at the second location after the projected time plus a
variance.
REFERENCES
Name Reference Date
Imai US 2007/0171085 A1 July 26, 2007
Horvitz US 2009/0002195 A1 Jan. 1, 2009
REJECTIONS
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–4.
The Examiner rejects claims 1–20 under 35 U.S.C. § 103 as being
unpatentable over Imai and Horvitz. Id. at 5–7.

2 This Decision refers to: (1) Appellant’s Specification (“Spec.”) filed May
12, 2015; (2) the Final Office Action (“Final Act.”) mailed January 22,
2018; (3) the Appeal Brief (“Appeal Br.”) filed August 1, 2018; and (4) the
Examiner’s Answer (“Ans.”) mailed December 5, 2018.
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Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv) and 41.39(a)(1).
OPINION
Patent-Eligible Subject Matter
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Alice and Mayo.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim recites. See Alice, 573 U.S. at 219 (“On
their face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk.”); see also
Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “we must examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that
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recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Office has published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Guidance”). In October 2019, the
USPTO published an update to that guidance. October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55,942 (hereinafter “Guidance
Update”). Under the Guidance and the Guidance Update, in determining
whether a claim falls within an excluded category, we first look to whether
the claim recites:
(1) Step 2A — Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, such as a
fundamental economic practice, or mental processes); and
(2) Step 2A — Prong Two: additional elements that integrate
the judicial exception into a practical application (see MPEP3
§§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). Only if a claim (1)
recites a judicial exception and (2) does not integrate that exception into a
practical application, do we then look to whether the claim (Step 2B):
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

3 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
We analyze the claims and the Examiner’s rejection in view of the
Guidance and the Guidance Update, and we adopt the nomenclature for the
steps used in the Guidance.
Appellant’s arguments specifically address the limitations recited in
independent claim 1 (Appeal Br. 9–12) and do not otherwise present any
arguments addressing any particularly identified limitation from any other
claim (see id. at 4–12). We, thus, select claim 1 as representative of all
claims. See 37 C.F.R. § 41.37(c)(1)(iv).
Step 1
As an initial matter, the claim must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Independent claim 1 recites a method.4 Thus, independent claim 1
recites a recognized statutory category under § 101, i.e., a process, and we

4 Independent claim 8 recites a “computer program product comprising . . .
computer readable storage media.” “Computer readable storage media”
potentially encompasses a computer program per se or a transitory signal per
se because the Specification does not specifically define “computer readable
storage media” to exclude signal propagation media or transitory media.
See, e.g., Spec. ¶¶ 35, 36. As such, the claimed “computer program
product” may fail to recite any of the recognized statutory categories under
§ 101. See In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007). We leave it
to the Examiner to determine whether “computer program product” recited
in claim 8 and its dependent claims recites one of the recognized statutory
categories.
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turn to the two-step Alice/Mayo analysis applied in accordance with the
Guidance.
Step 2A, Prong One in the Guidance
Next, we determine whether the claim, being directed to a statutory
class of invention, nonetheless recites a judicial exception. Guidance,
84 Fed. Reg. 51.
The Examiner determines that the claim recites a judicial exception:
an abstract idea. See Final Act. 2. The Examiner states that the claim
“amount[s] to mere collecting information, analyzing it, and displaying
certain results of the collection and analysis” and recites “a mental
process . . . that ‘can be performed in the human mind, or by a human using
a pen and paper.’” Id. at 3. According to the Guidance Update, when
recited at a high level of generality, collecting, analyzing, and displaying
information “recite a mental process when [the claim] contain[s] limitations
that can practically be performed in the human mind.” Guidance Update 7.
Such mental processes are a category of abstract idea. Id. at 2.
We agree that the claim recites limitations encompassing a mental
process that can be practically performed in the human mind and, therefore,
recites an abstract idea. At this step in our analysis, we focus on the
limitations reciting (a) “receiving . . . a request to monitor a data packet to be
transmitted from a first location to a second location over a first network,”
(b) “determining . . . a projected time for the transmission of the data packet
from the first location to the second location,” and (c) “responsive to
determining the projected time, determining . . . whether the data packet
arrived at the second location after the projected time plus a variance.”
Those limitations, in combination, recite a process that predicts when a
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monitored data packet should arrive at a location and then determines
whether the monitored data packet has actually arrived at the location within
some variance, i.e., tolerance, of the predicted time.
The claim is not limited to any particular manner for receiving a
monitoring request, determining a projected time, or determining whether an
arrival time is later than the projected time including a variance. As such,
the claim broadly recites desired results, rather than some computer-specific
manner to achieve those results. Receiving a request to perform a data
collection task, as recited in limitation (a), can be performed mentally.
Making a prediction and verifying that prediction, as recited in limitations
(b) and (c), may also be performed mentally. Together, limitations (a)–(c)
recite a process that determines whether a particular data packet has arrived
at a desired location within a certain predicted time; such a process can be
practically performed within the human mind, or via pen and paper.
The portions of the Specification Appellant relies on to summarize the
claimed subjected matter (Appeal Br. 2 (citing Spec. ¶¶ 54, 58–59)) further
support the determination that the claim recites a mental process that can be
practically performed in the human mind. For example, regarding limitation
(b), the Specification describes a simple computation to predict the amount
of time it takes a data packet to travel between two locations: dividing the
size of a packet with the speed of the network, e.g., a 12000 bit package
divided by a network speed of 2 million bits per second predicts a travel
time of 0.006 seconds. Spec. ¶ 58. Such a process to determine transit time,
which divides one given value by another given value, can be practically
performed within the human mind. Still further, regarding limitation (c), the
Specification describes “compar[ing] the predicted travel time of the
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packet . . . to the actual time taken . . . between when the packet was
transmitted . . . and when the packet was received” in consideration of a
“variance,” e.g., comparing 0.0044 seconds (a predicted time considering a
variance) with 0.03 seconds (an actual travel time). Id. ¶ 59. Comparing
two values is a process that can be practically performed in the human mind.
Accordingly, the claim recites a mental processes, a category of
abstract idea. Guidance Update 7.
Step 2A, Prong Two in the Guidance
Next, we determine whether the claim is directed to the abstract
concept itself or whether the claim is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223
(discussing Diamond v. Diehr, 450 U.S. 175, 177 (1981)).
We determine that the claim does not integrate the abstract idea, as
described above, into a practical application. The claim does not apply the
abstract concept described above, i.e., determining whether a packet has
arrived within a certain predicted timeframe, to improve some computing
technology. Specifically, the claim determines whether or not a data packet
has arrived within a certain timeframe but, otherwise, includes no limitation
describing the application to, or improvement of, a particular technology.
Further, the remaining additional elements recited in the claim, i.e.,
performing the abstract idea discussed above “by one or more computer
processors,” effectively instruct implementation of the abstract idea on a
computer, merely using the computer as a tool to perform the abstract idea.
The mere use of a computer as a tool to perform the abstract idea, however,
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fails to integrate the abstract concept into a practical application. Guidance,
84 Fed. Reg. 55.
Turning to Appellant’s arguments, Appellant argues that the claimed
specific approach is based in computer technology related to
communications systems to solve a problem in the technology,
where the problem is that current tier based management of
infrastructure elements that follow a “bottom up” approach are
intrusive and contribute to the overheads of traffic specific to
monitor, and the solution includes enabling combined benefits of
differentiated treatment for monitoring of packets for the tenants
through a non-intrusive location based mechanism enable[d]
through multiple categories of interfaces.
Appeal Br. 11.
However, that argument is not commensurate with the scope of the
claim because the claim does not recite Appellant’s asserted “specific
approach” to “solve a problem in the technology.” Appellant has not
explained which limitations provide “differentiated treatment for monitoring
of packets for the tenants through a non-intrusive location based mechanism
enable[d] through multiple categories of interfaces.” See id. Further, on its
face, the claim fails to recite any of the features Appellant asserts. For
example, the claim recites a single process for analyzing a data packet’s
travel time, rather than providing “differentiated treatment.” Nor does the
claim recite any interface, let alone “multiple categories of interfaces.”
Furthermore, the claim does not recite any particular application of the
abstract idea. The claim determines whether a monitored packet has arrived
at a location within a certain predicted time, but does not otherwise recite
any particular manner of using that determination to improve computing
technology.
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Additionally, none of the other indicia of integration in the Guidance
is present in the claim. Guidance, 84 Fed. Reg. 55; see MPEP
§§ 2106.05(a)–(c), (e). For example, the claim does not recite a particular
machine and, instead, generically recites “one or more computer
processors.” Further, the claim does not transform an article, i.e., some type
of tangible or physical object, but instead analyzes information. As such, the
claim does not recite the “[t]ransformation and reduction of an article ‘to a
different state or thing.’” Bilski, 561 U.S. at 604 (alteration in original);
MPEP § 2106.05(c). Therefore, we determine that the claim is not directed
to a specific asserted technological improvement or otherwise integrated into
a practical application. Consequently, we conclude the claim is “directed to”
a judicial exception. Guidance, 84 Fed. Reg. 54.
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73).
We determine the additional elements recited in claim 1, i.e., the “one
or more computer processors” performing the abstract idea, fail to amount to
significantly more than the abstract idea itself. Using a computer to perform
data processing tasks, such as collecting and analyzing information, is well-
understood, routine, and conventional computing activity. Even considering
the combination of collecting information and then analyzing that
information, such a data processing procedure is common computer
functionality. The Specification suggests as much, stating that the computer
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system that performs the abstract idea is “a general-purpose computing
device.” Spec. ¶ 33; see id. ¶¶ 31, 47, 68.
Appellant argues that the claim
add[s] a specific limitation other than what is well-understood,
routine, and conventional in the field at least by “determining, by
one or more computer processors, a projected time for the
transmission of the data packet from the first location to the
second location; and determining, by one or more computer
processors, whether the data packet arrived at the second
location after the projected time plus a variance.”
Appeal Br. 11.
That argument, reproducing the last two limitations of the claim,
improperly relies on the abstract idea to provide significantly more than the
abstract idea itself. The majority of the claim, aside from the performance of
the claim “by one or more computer processors,” recites the abstract idea, as
described above. Even if the abstract idea were novel, the novelty of the
abstract idea is not enough to save it from ineligibility. See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim
for a new abstract idea is still an abstract idea.”).
Additionally, Appellant argues “the claims do not seek to ‘tie up’ the
method steps generally such that others cannot practice them.” Appeal
Br. 8. Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). Where claims recite only patent-ineligible subject matter, as they do
here, “preemption concerns are fully addressed and made moot.” Id.
Moreover, the claim does seek to tie up the method steps. As discussed
above, the claim does not recite any particular manner to receive a data
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packet monitoring request, to determine a projected time for transmitting the
data packet, or to determine whether the data packet arrives within a certain
time frame. As such, the claim covers any manner to achieve those claimed
results.
We, thus, conclude that claim 1 does not provide an inventive concept
because any additional elements recited in the claim, considered individually
and as an ordered combination, do not provide significantly more than the
recited judicial exception. Accordingly, we are not persuaded that the claim
recites patent-eligible subject matter.
Additionally, although we agree with the Examiner that claim 1 does
not recite patent-eligible subject matter, our decision affirming the
Examiner’s rejection of claim 1 is based on reasoning and determinations
that the Examiner does not set forth in rejecting claim 1. Accordingly, we
designate our affirmance of the rejection of claim 1 as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).
Further, Appellant has not proffered sufficient evidence or argument
to persuade us that any of the limitations in remaining claims 2–20 provides
a meaningful limitation that transforms those claims into a patent-eligible
application. See Appeal Br. 4–12. Accordingly, for the reasons set forth
above, we affirm the Examiner’s rejection of claims 2–20, also designating
our affirmance as a new ground.

Obviousness
Appellant contends the Examiner erred in finding Horvitz teaches
“responsive to determining the projected time, determining, by one or more
computer processors, whether the data packet arrived at the second location
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after the projected time plus a variance,” as recited in claim 1 and similarly
recited in claims 8 and 15. Appeal Br. 12–16. Appellant generally argues
the Examiner does not “provid[e] any additional explanation as to the
reasoning for the rejection” over Imai and Horvitz. Id. at 13. Appellant
further argues Horvitz “build[s] a model to predict variance” but does not
teach “the projected time plus a variance.” Id. at 15–16.
We are persuaded that the Examiner erred. The Examiner ostensibly
relies on Horvitz, or the combination of Imai and Horvitz, to teach
“responsive to determining the projected time, determining . . . whether the
data packet arrived at the second location after the projected time plus a
variance.” See Final Act. 5. The Examiner does so by reproducing a portion
of paragraph 56 of Horvitz:
[D]ata valuation component 212 can use generated utility values
to construct at least one predictive model of variance. For
example, the data valuation component 212 can build a model to
predict variance of observed road speeds. Variances are
predicted on a continuous basis as well as done for a specified
range (e.g., during times designated as ‘rush hour.’).
Id. The Examiner then states “[i]t would have been obvious to one having
ordinary skill in the art at the time of the invention was made to have
incorporated” the previously reproduced portion of Horvitz, but the
Examiner provides no further discussion regarding Horvitz. Id. at 5–6.
Merely reproducing Horvitz’s disclosure provides no reasoning that explains
how Horvitz, alone or in combination with Imai, teaches “responsive to
determining the projected time, determining . . . whether the data packet
arrived at the second location after the projected time plus a variance.”
Furthermore, although the Examiner’s Answer discusses the motivation for
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the combination (Ans. 4; see Final Act. 8), the rationale to combine does not
explain how the references teach the disputed limitation.
Because the Examiner’s Final Action and Answer both fail to include
any explanation regarding how Horvitz, or the combination of Horvitz and
Imai, teaches “responsive to determining the projected time, determining, by
one or more computer processors, whether the data packet arrived at the
second location after the projected time plus a variance,” we are constrained
by the record not to sustain the Examiner’s obviousness rejection of
independent claims 1, 8, and 15 over the stated combination of Imai and
Horvitz.
Because we determine the Examiner erred, we need not reach the
merits of Appellant’s other arguments. See Appeal Br. 14–21. Therefore,
we reverse the Examiner’s decision to reject claims 1–20 under
35 U.S.C. § 103.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed New
Ground
1–20 101 Eligibility 1–20 1–20
1–20 103 Imai, Horvitz 1–20
Overall
Outcome
1–20 1–20

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
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When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(1)(iv).
AFFIRMED;
37 C.F.R. § 41.50(b)