John Spitzer et al.

Patent Trials and Appeals Board

Feb 26, 2020

14066904 - (D) (P.T.A.B. Feb. 26, 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.
14/066,904 10/30/2013 John SPITZER SC-13-0038-US01/334336 2271
158652 7590 02/26/2020
SHOOK, HARDY & BACON LLP
NVIDIA CORPORATION
2555 GRAND BLVD
KANSAS CITY, MO 64108-2613
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
IPDocket@shb.com
docket.shb@clarivate.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SPITZER and YURI URALSKY
Appeal 2018-005903
Application 14/066,904
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, 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 1–6 and 8–13.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nvidia Corporation.
Br. 3.
2 Claims 7 and 15–20 are withdrawn from consideration. Br. 21–24 (Claims
App.).
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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for gathering time-
varying metrics. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of gathering performance data, the method
comprising:
using a client device, dividing an application session
associated with an application into a set of sub-sessions;
measuring a time-varying parameter associated with said
application by gathering performance data associated with said
time-varying parameter over time during each sub-session of said
set of sub-sessions on said client device; and
sorting said performance data for each sub-session into a
histogram.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Friedrich US 5,958,009 Sept. 28, 1999
Turicchi US 2006/0265192 A1 Nov. 23, 2006
Ritts US 2011/0018884 A1 Jan. 27, 2011
REJECTIONS
I. Claims 1–6 and 8–13 are rejected under 35 U.S.C. § 101 as
being directed to an abstract idea without significantly more.
II. Claims 1, 4, 8, and 11 are rejected under 35 U.S.C.
§ 102(a)(l)/(a)(2) as anticipated by Turicchi.
III. Claims 2, 3, 9, and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Turicchi.
IV. Claims 5 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Turicchi and Friedrich.
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V. Claims 6 and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Turicchi and Ritts.
OPINION
Rejection I, Eligibility
Appellant makes arguments for the patent eligibility of claims 1–6 and
8–13 as a group. See Br. 11–13. We select claim 1 as the representative
claim, and claims 2–6 and 8–13 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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 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. E.g., Alice Corp. v. CLS Bank Int'l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. 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 is “directed to.”
Id. 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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “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 (citation omitted). “A claim that
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. (quoting Mayo, 566 U.S. at 77) (alteration in original).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January of 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Memorandum”).
Under Step 2A of that guidance, we first look to whether the claim recites:
(1) 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
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, in Step
2B, to whether the claim:
(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
(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 Memorandum.
Step 1 -- Statutory Category
Claim 1 recites a method of gathering data, and, therefore, is a
process. See Br. 20 (Claims App.).
Abstract Idea
In determining that claim 1 is directed to a judicial exception to patent
eligibility, the Examiner takes the position that the claim is directed to
collecting data, performing calculations on the data, and displaying the
results, which is an idea of itself, and also can be performed by a human
using pen and paper. Non-Final Act. 2.
Appellant argues that the claims are not directed to an abstract idea.
Br. 12. According to Appellant, the claim limitations “relate to application
sessions that cannot possibly be performed by a human using a pen and
paper because the claimed embodiments relate to data concerning the
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execution of an application that is imperceptible to humans.” Id. (emphasis
omitted).
Step 2A, Prong 1 -- Recitation of Judicial Exception
Claim 1 recites the steps of 1) “measuring a time-varying parameter,”
2) “gathering performance data,” and 3) “sorting said performance data into
a histogram.” Br. 20 (Claims App.).
These steps involve receiving and analyzing of data. In the context of
claim 1, this language amounts to reciting a mental process of evaluating.
See In re BRCA1 & BRCA2-Based Heredity Cancer Test Patent Litig., 774
F.3d 755, 763 (Fed. Cir. 2014); see also Memorandum at 52 (defining
mental processes as “concepts performed in the human mind (including an
observation, evaluation, judgment, opinion” (footnote omitted)); see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection,
recognition, and storage is undisputedly well-known. Indeed, humans have
always performed these functions.”). The specific type of sorting (to create
a histogram), is merely an extension of this mental process. Thus, we agree
with the Examiner that claim 1 recites a mental process, which is within one
of the three categories of abstract ideas set forth in the Memorandum.
Accordingly, the outcome of our analysis under Step 2A, Prong 1, requires
us to proceed to Step 2A, Prong 2. See Memorandum, 84 Fed. Reg. at 54.
Step 2A, Prong 2 -- Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Step 2A, Prong 2, we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
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(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
See Memorandum. This evaluation requires an additional element or a
combination of additional elements in the claim to 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 exception. See id.
The Examiner finds that process of “gathering performance data
associated with said time-varying parameter over time during each sub-
session of said set of sub-sessions” recited in claim 1 as well as the step of
carrying out the recited functions using a client device is merely the
recitation of “functions performed by a generic computer performing routine
data processing steps.” Non-Final Act. 2.
Appellant argues that dividing an application session associated with
an application and measuring a time-varying parameter associated with the
application is “clearly rooted in computer technology that is not known to
have been previously performed manually.” Br. 12 (emphasis omitted).
To the extent that Appellant is arguing that the claimed process
improves how the computer operates, we disagree. The claimed functions
are merely extra-solution activity, such as data gathering and dividing the
data into smaller portions, as well as providing an output. See Memorandum
at 55 n.31.
Appellant also argues that “the claimed histograms generated
through the claimed procedures can be used to improve execution of the
application.” Br. 13 (italics added).
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Appellant’s argument is not persuasive. Claim 1 recites “sorting said
performance data for each sub-session into a histogram.” Br. 20 (Claims
App.). The Specification discloses that “these histograms may provide
detailed information for use in micro stutter detection and analysis for a
given application session (or sub-session). Spec. ¶ 33. The method recited
in claim 1 does not improve the functioning of the computer itself, instead,
the method merely generates a histogram for a particular kind of
information. Further, in claim 1, we see no improvement to another
technical field. Nor do we see any transformation or particular machine of
the kind that renders an abstract idea patent-eligible. Thus, claim 1 does not
integrate the abstract idea into a practical application. Consequently, claim 1
is directed to the recited abstract idea and requires further analysis under
Step 2B
Step 2B -- Well- Understood, Routine, Conventional Activity
In Step 2B, we determine whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See Memorandum.
Appellant argues that, “when taken as an ordered combination, the
limitations provide unconventional steps that confine the abstract idea to a
particular useful application.” Br. 13 (italicization added). Appellant
follows this sentence by stating “the claimed histograms generated
through the claimed procedures can be used to improve execution of the
application.” Id.
Appellant’s argument that generating histograms is unconventional is
unavailing because it merely concludes that the ordered combination of steps
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is unconventional and results in improved function. Appellant provides no
persuasive argument in support of this conclusion.
Further, as the Examiner correctly finds, Turicchi discloses that
“[a]nother important tool in analyzing computer system performance is
generating a histogram for a selected metric.” Turicchi ¶ 43; see also Non-
Final Act. 5. Thus, the use of histograms in this field was known.
Appellant’s Specification identifies the computing resources generically
(Spec. ¶ 45; see also Non-Final Act. 3) and identifies that the histogram
generation module shown in Figure 1E and 2 as “part of a graphics system
(e.g., graphics driver) residing in memory within client device 100,” thus
indicating that implementation of the abstract idea is performed using known
computers.
Appellant also argues that claim 1 does not preempt all techniques for
gathering performance data. See Br. 11. However, as our reviewing court
has explained, “the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573
U.S. at 216). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id. Moreover, “[w]here a patent’s claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework .
. ., preemption concerns are fully addressed and made moot.” Id.; see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.),
(“[T]hat the claims do not preempt all price optimization or may be limited
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to price optimization in the ecommerce setting do not make them any less
abstract.”) cert. denied, 136 S. Ct. 701 (2015).
Although claim 1 limits, in various ways, the recited method of
gathering performance data, and, therefore, would seem to exclude
numerous other data gathering methods, we do not agree that claim 1 recites
anything significantly more than the abstract ideas discussed above in Step
2A. In particular, the various actions recited in claim 1 that differentiate the
recited method from other data gathering methods relate to the abstract idea,
not to an innovation of the kind that benefits the claimed subject matter
under a Step 2B analysis.
We have considered all of Appellant’s arguments in support of the
patent-eligibility of claim 1, but find them unpersuasive. Accordingly, we
sustain the rejection of claims 1–6 and 8–13 under 35 U.S.C. § 101.
Rejection II, Anticipation
Claim 1 recites, inter alia, “measuring a time-varying parameter
associated with said application by gathering performance data associated
with said time-varying parameter over time.” Br. 20 (Claims App.).
Appellant argues that Turicchi relates to data collection for the system
in general and not to any specific application. Br. 15. According to
Appellant, there is no teaching in Turicchi that performance data, specific to
an application, is measured. Id. Nor does Turicchi disclose that “the system
components, upon which usage measurements are taken, include
applications.” Id.
The Examiner responds that Turicchi’s Figure 7 shows a computer
that collects data on applications 75. Ans. 11. In addition, the Examiner
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notes that, because Turicchi collects data on systems, and the systems run
applications, Turicchi is collecting application data. Id.
Appellant has the better position. Although we appreciate that the
system of Turicchi uses “multiple applications 75,” Turicchi discloses that
“the applications, for example, can control processes 40, 50 and 60 to gather,
store (for example, in storage 73), and analyze the data being gathered.”
Turicchi ¶ 39. Using applications to control processes that collect data is not
collecting data of the application. Rather, the data being collected is system
performance data such as the percent of memory in use. Turicchi ¶ 2.
We appreciate the Examiner’s position that Turicchi discloses that
“any data stream can be handled in the manner discussed so as to preserve
the integrity of the data over periods of time without unduly mathematically
changing the value of the data.” Ans. 11 (quoting Turicchi ¶ 29). However,
even if the Examiner’s assertion were correct and such a teaching in
Turicchi would have rendered obvious the process of collecting and
processing data on individual applications (see Ans. 11), there is no
obviousness rejection of claim 1 before us.3 A preponderance of the
evidence does not support the Examiner’s finding that Turicchi measures a
time-varying parameter associated with an application by gathering
performance data associated with the time-varying parameter over time, as
required by claim 1. We do not sustain the rejection of claim 1, and claim 4
depending therefrom as anticipated by Turicchi.

3 The Examiner also asserts that “Friedrich . . . anticipates at least claim 1.”
See Ans. 11. However, the Examiner has provided no analysis of Friedrich
for claim 1, and no rejection of claim 1 based on Friedrich is before us.
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System claim 8 requires a data gathering module that includes the
“measur[ing] a time-varying parameter associated with said application by
gathering performance data associated with said time-varying parameter
over time” limitation discussed above regarding claim 1. The Examiner
relies on the same findings and reasoning to reject claim 8 as discussed
above regarding the rejection of claim 1. See Non-Final Act. 4–5.
Accordingly, for the same reasons discussed above with respect to the
rejection of claim 1, we do not sustain the rejection of claim 8, and claim 11
depending therefrom, as anticipated by Turicchi.
Rejections III–V, Obviousness
Rejections III–V address only claims that depend from claims 1 or 8.
The Examiner does not rely on 1st and 2nd derivatives being known
mathematical definitions, or on the additional disclosures of Friedrich and
Ritts in any way that would remedy the deficiency discussed above
regarding Rejection II with respect to the requirements of claim 1. See Final
Act. 6–8. Accordingly, we do not sustain the rejection of dependent claims
2, 3, 9, and 10 as unpatentable over Turicchi, the rejection of claims 5 and
12 as unpatentable over Turicchi and Friedrich, or the rejection of dependent
claims 6 and 13 as unpatentable over Turicchi and Ritts.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 8–13 101 Eligibility 1–6, 8–13
1, 4, 8, 11 102(a)1/(a)2 Turicchi 1, 4, 8, 11
2, 3, 9, 10 103 Turicchi 2, 3, 9, 10
5, 12 103 Turicchi, Friedrich 5, 12
6, 13 103 Turicchi, Ritts 6, 13
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
Overall
Outcome:
  1–6, 8–13
TIME PERIOD FOR RESPONSE
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